OPPOSITION No B 2 241 480

Velum Limited, ITM S.A., 17, rue du Cendrier, PO Box 1699, - 1211 Geneva 1, Switzerland (opponent), represented by Neil John Muttock, 6 Kings Avenue, Muswell Hill London N10 1PB, United Kingdom (professional representative)

a g a i n s t

Bruce Kirby, Inc., 213 Rowayton Ave, Rowayton, Connecticut 06853, United States of America (applicant), represented by Cleveland, 10 Fetter Lane, London EC4A 1BR, United Kingdom (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 241 480 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 11 778 313 for the word ‘KIRBY TORCH’, namely against all the goods in Classes 12 and 22. The opposition is based on European trade mark registration No 11 584 158, German trade mark registration No 302 010 039 853, Italian trade mark registration No 1 437 478 and Spanish trade mark registration No 2 941 317. All the earlier marks are for the word ‘KIRBY’ and the opposition is based on their goods in Class 12. The opponent invoked Article 8(1)(a) and (b) and Article 8(5) EUTMR.

SUBSTANTIATION OF EARLIER NATIONAL MARKS

According to Article 76(1) EUTMR, 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) EUTMIR, 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) EUTMIR, 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 European Union 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) EUTMIR.

According to Rule 19(3) EUTMIR, 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.

According to Rule 98(1) EUTMIR, when a translation of a document is to be filed, the translation shall identify the document to which it refers and reproduce the structure and contents of the original document.

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

On 23/09/2013 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. This time limit expired on 28/01/2014.

On 27/09/2013 the opponent submitted the certificates corresponding to the German and Italian earlier marks and an extract from the official national office corresponding to the Spanish earlier mark (SITADEX). These documents are in German, Italian and Spanish.

On 24/01/2014 the opponent submitted facts, evidence and arguments in support of the opposition. The document filed by the opponent is in the language of the proceedings and contains data concerning the national trade marks on which the opposition is based such as the earlier goods. However, such document does not meet the requirements set in Rule 19(3) and Rule 98(1) EUTMIR

The Opposition Division notes that the document submitted by the opponent does not contain all the relevant data of the registration certificates and print out from the official database, such as details of the owner and priority or expiry dates of the mark. Hence, said document does not reproduce the structure and contents of the evidence to be translated.

In the case of the certificate for the German earlier mark, which includes the international identification codes, the opponent is not obliged to submit an explanation of the codes, but nevertheless, the document submitted on 24/01/2014 by the opponent does not reproduce the structure and contents of the original certificate.

The Office does not consider that the information already given in the language of the proceedings in the notice of opposition and in the document submitted later with the explanation of grounds, amounts to a valid translation of the registration certificates. The translation has to be on a stand-alone basis and cannot be assembled from fragments taken from other documents.

Therefore, the opponent did not submit the necessary translations into English of the certificates and extract of the three national marks.

According to Rule 19(4) EUTMIR, 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) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR 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 these national earlier marks. The opposition will continue on the basis of European trade mark registration No 11 584 158.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

.

1. The goods

In its submission of 24/01/2014, the opponent declared for the first time that the opposition was based on all the goods and services of the earlier mark and that it was directed against all the goods applied for. However, this assertion cannot be taken into account as the opponent clearly indicated in the opposition form that the opposition was based only on part of the goods and services for which the earlier mark was applied for at that moment, namely the goods in Class 12, and that it was directed only against all the goods in Classes 12 and 22 and not against the goods in Class 25.

The two-month period commencing after the ending of the cooling-off period, given to the opponent according to Rule 19(1) EUTMIR, is an opportunity for the opposing party to complete facts, evidence or arguments already claimed in the notice of opposition but not to extend the scope or the basis of the opposition.

Therefore the goods on which the opposition was initially based are the following:

Class 12: Boats and parts therefore.

The contested goods are the following:

Class 12: Sail boats; yachts; boats; masts for boats; parts and fittings for sail boats, yachts and boats.

Class 22: Sails; ropes; nets; tarpaulins; biminis for boats; covers for marine vessels; unfitted covers for marine vessels.

On 31/07/2013 the applicant in the present proceedings filed a notice of opposition (case B 2 220 955) against the registration of the earlier application for the word ‘KIRBY’ (the earlier right in the present proceedings) on the basis of its priority date from the United States for part of the goods applied for.

On 13/10/2014 the Opposition Division adopted a decision rejecting the boats and parts therefore in Class 12 that are the basis of the present proceedings. The decision was appealed and on 10/12/2015, the Fourth Board of Appeal dismissed the appeal, thus confirming the rejection for said goods.

On 19/02/2016, the decision from the Fourth Board of Appeal became final.

Consequently, in the present case, the opponent has lost the only goods on which it based its opposition. Therefore, the conditions of Article 8(1)(b) EUTMR are not fulfilled anymore and the opposition must be rejected. For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR for the same reason.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

As said before the opponent has lost the only goods on which it based its opposition and for which it claimed a reputation. Therefore, also the conditions of Article 8(5) EUTMR are not fulfilled anymore and the opposition must be rejected also in relation to this ground.

COSTS

According to Article 85(1) EUTMR, 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 Rule 94(7)(d)(ii) EUTMIR, 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

Steve HAUSER

Loreto URRACA LUQUE

Julie GOUTARD

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. 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 720 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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.