OPPOSITION No B 2 458 738

S.C. Orlando Import Export 2001 S.R.L., Sos. de Centura Nr. 5, Clinceni, Judetul Ilfov, Romania (opponent), represented by Cabinet Enpora Intellectual Property, Str. George Calinescu no. 52 A, Ap. 1 Sector 1, 011694 Bucuresti, Romania (professional representative)

a g a i n s t

Olasagasti Gia’ Salvatore Orlando & C. S.R.L., Via E. Raggio 11/10 sc. A, 16124 Genoa, Italy (applicant), represented by Praxi Intellectual Property S.P.A., Via Baracca 1r 4 piano, 17100 Savona, Italy (professional representative).

On 14/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 458 738 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 13 348 719 for the word mark ‘ORLANDO’, namely against all the goods in Class 29. The opposition is based on Romanian trade mark registration No 125 495 for the word mark ‘ORLANDO’S’. The opponent invoked Article 8(1)(b) EUTMR.

ORLANDO’S	ORLANDO
Earlier trade mark	Contested sign

SUBSTANTIATION

According to Article 76 (1) EUTMR (in the version in force at the time of commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted 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 (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to submit 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 (in the version in force at the time of commencement of the adversarial part), within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit 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 (in the version in force at the time of commencement of the adversarial part).

In the present case, the notice of opposition was not accompanied by any evidence as regards the earlier trade mark on which the opposition is based.

On 21/01/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit was supposed to expire on 26/05/2015.

However, both parties requested an extension of the cooling-off period, whereby this period was extended by 22 months, until 26/01/2017.

On 25/01/2017, both parties requested a suspension of the proceedings, due to ongoing negotiations towards an amicable settlement of the opposition. By the letter of the Office dated 06/02/2017, the parties were informed that the suspension had taken effect as from 27/01/2017 (after the commencement of the adversarial part of the proceedings) and would expire on 27/01/2018.

Accordingly, the opponent was invited (by the same letter, dated 06/02/2017) to submit facts, evidence and arguments in support of its opposition on or before 27/03/2018.

The opponent did not submit any evidence concerning the substantiation of the earlier trade mark.

On 31/05/2018, the opponent was informed by the Office that it had failed to substantiate the earlier right claimed as the basis of the opposition within the time limit, as the opponent had not submitted any evidence concerning the substantiation of the earlier trade mark.

According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded.

COSTS

According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Maria SLAVOVA

Mads Bjørn Georg JENSEN

Irina SOTIROVA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.