OPPOSITION No B 1 990 913

Vilaisabel, S.A., Rua Nova Da Ordem, Medelo, Apartado 250, 4820-505 Fafe, Portugal (opponent), represented by Alvaro Duarte & Associados, Avª Marquês de Tomar, nº 44-6º, 1069-229 Lisboa, Portugal (professional representative)

a g a i n s t

Filigrama Design & Development Ltda, Rua Professor Ulisses Vieira, Nº 596, Curitiba, Paraná, Brazil (applicant), represented by Stefano Merico, Via Eschilo, 190 int. 7, 00125 Roma, Italy (professional representative).

On 18/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 990 913 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of Community trade mark application No 10 469 617, namely against all the goods and services in Classes 25, 28 and 35. The opposition is based on the following earlier rights:

• Portuguese trade mark registration No 482 272, for the figurative mark ‘ ’;

• Portuguese trade mark registration No 485 600, for the word mark ‘OUS’;

• Portuguese trade mark registration No 404 109, for the figurative mark
  ‘ ’.

The opponent invoked Article 8(1)(a) and (b) CTMR.

SUBSTANTIATION

According to Article 76(1) CTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) CTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) CTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a Community trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered - Rule 19(2)(a)(ii) CTMIR.

Earlier Portuguese trade mark registration No 404 109

In the present case the notice of opposition was filed on 04/04/2012 in the name of ANONIMO – IMOBILIÁRIA, S.A.

The notice of opposition was accompanied with the certificate of earlier Portuguese trade mark registration No 404 109, for the figurative mark ‘ ’. According to the data in the certificate, the owner of this mark is António Peres Guerreiro dos Santos.

Consequently, the evidence mentioned above is not sufficient to substantiate the opponent’s earlier Portuguese trade mark No 404 109, because the name of the opponent mentioned in the notice of opposition is not the same as the name of the owner of the earlier mark No 404 109. No further evidence has been filed with a view to the opponent’s entitlement to file the opposition on the basis of this earlier right.

Earlier Portuguese trade mark registrations No 482 272 and No 485 600

As far as these earlier marks are concerned, the notice of opposition, filed on 04/04/2012, was accompanied with the certificates of earlier Portuguese trade mark registration No 482 272 for the figurative mark ‘ ’ and Portuguese trade mark registration No 485 600 for the word mark ‘OUS’. According to the data in the certificates of these earlier marks the name of the owner is ANÓNIMO – IMOBILIÁRIA, S.A.

During the course of proceedings the change of the opponent from ANÓNIMO – IMOBILIÁRIA, S.A. to VILAISABEL, S.A. was recorded. On 05/06/2015 the opponent was given a time limit until 10/08/2015, to submit the evidence of transfer/change of name of the owner of the earlier Portuguese marks No 482 272 and No 485 600.

The opponent did not respond within the time limit.

Therefore, the opponent has not shown whether the discrepancies described above are a result of a subsequent change in the ownership of the earlier rights or a change in the denomination of the opponent.

According to Rule 20(1) CTMIR, if until expiry of the period referred to in Rule 19(1) CTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (7)(d)(ii) CTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Eamonn KELLY

Justyna GBYL

Natascha GALPERIN

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.