OPPOSITION No B 2 229 824

Haberl Gastronomie e.K., Kuehler Weg 4, 82065 Baierbrunn Isartal, Germany (opponent), represented by RGTH Patentanwälte Part GmbB, Sendlinger Str. 2 / III, 80331 München, Germany (professional representative)

a g a i n s t

Měšťanský pivovar Havlíčkův Brod a.s., Dobrovského 2027, 58001 Havlíčkův Brod, Czech Republic (applicant), represented by Radmila Baumová, nám. Republiky 75/2, 591 01 Žďár nad Sázavou, Czech Republic (professional representative).

On 09/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 229 824 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 11 681 111 in Classes 16, 32, 35, 40 and 43. The opposition is based on German trade mark registration No 30 427 891 for the word mark ‘Haberl’ and goods and services in Classes 16, 41 and 43 and on the German company name ‘Haberl Gastronomie e.k’ allegedly used in Germany in relation to goods and services in Classes 16, 41 and 43 and the domain names ‘haberl.de’ and ‘haberl-gastronomie.de’. The opponent invoked Article 8(1)(b) and Article 8(4) CTMR.

Haberl Haberl Gastronomie e.k haberl.de haberl-gastronomie.de
Earlier trade mark, company name and domain names	Contested sign

SUBSTANTIATION OF THE EARLIER REGISTERED TRADE MARK

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.

According to Rule 19(3) CTMIR, the information and evidence referred to in paragraphs 1 and 2 shall be in the language of the proceedings or accompanied by a translation. The translation shall be submitted within the time limit specified for submitting the original document.

In the present case part of the evidence of the earlier German trade mark registration No 30 427 891, and more precisely its list of goods and services, filed by the opponent on 21/08/2013 is not in the language of the proceedings.

On 28/08/2013 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired, after a 22 month extension of the cooling-off period, on 02/11/2015.

The opponent did not submit the necessary translation.

According to Rule 19(4) CTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

It follows that the evidence filed by the opponent cannot be taken into account.

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, as far as it is based on this earlier mark.

SUBSTANTION OF THE OTHER SIGNS USED IN THE COURSE OF TRADE – ARTICLE 8(4) CTMR

According to Article 8(4) CTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Community legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a Community trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

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 its earlier marks or earlier rights, as well as evidence proving its entitlement to file the opposition.

In the Notice of Opposition filed on 16/08/2013, the opponent based its opposition on Article 8(4) CTMR. In its observations sent on 21/08/2013 namely the last day of the opposition period, the opponent mentioned that the signs used in the course of trade under Article 8(4) CTMR are two domain names ‘haberl.de’ and ’haberl-gastronomie.de’

According to Rule 19(3) CTMIR, the information and evidence referred to in paragraphs 1 and 2 shall be in the language of the proceedings or accompanied by a translation. The translation shall be submitted within the time limit specified for submitting the original document.

In the present case the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade, specifically the German company name ‘Haberl Gastronomie e.k’’.

On 21/08/2013, the opponent submitted written arguments in support of its opposition and four pages in German described by the opponent as ‘piece of evidence of use / of protection for domain ‘haberl.de’ and ‘piece of evidence of use / of protection for domain ‘haberl-gastronomie.de’.

In the present case the evidence filed by the opponent is not in the language of the proceedings.

On 28/08/2013 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired, after a 22 month extension of the cooling-off period, on 02/11/2015.

The opponent did not submit the necessary translations or evidence of use.

According to Rule 19(4) CTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

Given that the abovementioned evidence cannot be taken into account, and that no additional evidence has been submitted within the relevant time limit, the opponent failed to establish use in the course of trade of the signs on which the opposition is based.

Given that one of the necessary requirements of Article 8(4) CTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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

Juan MORALES PAREDES

Isabel DE ALFONSETI HARTMANN

Jessica LEWIS

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.