OPPOSITION No B 2 569 880

Francisco Teixeira, Avenida Irene Lisboa, Lote 19, 1º armazem D, P- Rio de Mouro

Portugal (opponent), represented by Paulo Neves, Avenida da Liberdade 249 – 1, 1250-143 Lisboa, Portugal (professional representative).

a g a i n s t

John Henry Sharp, Coombe Cottage, Berendens Lane, Great Warley CM13 3JB, United Kingdom (applicant), represented by Bison River Limited, Unit 8 Valley Court Offices Lower Road, Croydon near Royston, Herts SG8 0HF, United Kingdom (professional representative).

On 17/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 569 880 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 and services of European Union trade mark application No 13 492 806, namely against all the goods and services in Classes 18, 25 and 35. The opposition is based on Portuguese trade mark registration No 419 042. The opponent invoked Article 8(1)(a) and (b) EUTMR.

MASTRO
Earlier trade mark	Contested sign

SUBSTANTIATION

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.

In the present case the evidence filed by the opponent – registration certificate of the Portuguese trade mark No 419 042 – is not in the language of the proceedings.

Initially, on 19/10/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. On 04/01/2016 at the request of both parties the cooling-off period was extended by 22 months. On 09/06/2016 due to the opting out requested by the applicant, the Office set new deadlines for the opposition proceedings and in particular for the opponent to submit facts, evidence and respective translation in support of the opposition.

This time limit expired on 23/08/2016.

The opponent did not submit the necessary translation within the given time limit.

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.

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

Anna ZIÓŁKOWSKA

Benjamin Erik WINSNER

Vita VORONECKAITE

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.