OPPOSITION No B 2 524 497

Volkswagen Aktiengesellschaft, Berliner Ring 2, 38440, Wolfsburg, Germany (opponent), represented by Dennemeyer & Associates, Landaubogen 1-3, 81373, München, Germany (professional representative)

a g a i n s t

Poclain Marketing & Services, 163 Rue de Kiem, 8030, Strassen, Luxembourg (applicant), represented by Cabinet Beau de Loménie, 158, rue de L'Université, 75340 Paris Cédex 07, France (professional representative).

On 22/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 524 497 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all of the goods and services of European Union trade mark application No 13 707 617 for the figurative mark , namely all the goods and services in Classes 12, 39, 40 and 42. The opposition is based on international trade mark registration No 899 806 designating the European Union for the word mark ‘CROSS’. The opponent invoked Article 8(1)(b) EUTMR.

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 evidence filed by the opponent in relation to the earlier international trade mark registration No 899 806 consists of an extract from the ‘CTM-Online’ data base (now called ‘eSearch plus’ database) of the EUIPO.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark because the eSearch database extract does not emanate from the administration by which the trade mark was registered, the World Intellectual Property Organization (WIPO).

In this regard, it must be noted that an international trade mark registration designating the European Union has the same legal effect as a European Union trade mark registration, but it is not a European Union trade mark registration. The Office is not competent to administer international registrations and is not the administration by which international registrations are registered, which is the World Intellectual Property Organization (26/11/2014, T-240/13, Alifoods, EU:T:2014:994, § 28).

Consequently, to substantiate an opposition based on an international trade mark registration designating the European Union, the opponent must provide the Office with a copy of the relevant registration certificate (or equivalent documents issued by the administration with which the mark is registered) or an extract from the accepted official databases.

As regards international registrations, the following database is accepted (judgment of 26/11/2014, T-240/13, Alifoods, EU:T:2014:994):

 WIPO´s ‘Madrid Monitor’ (the ‘short’ version of the extract being sufficient as long as it contains all the necessary information, but the extended or long version of the WIPO extract being preferable as it contains all the individual indications for each designated country, including the Statement of Grant of Protection).

 TMview (as long as it contains the relevant data, since it reflects the information obtained directly from the WIPO database).

The old practice of accepting printouts from eSearch plus (previously CTM-Online) for international registrations with EU designation only applies to oppositions with a filing date before 01/07/2012. In the present case, the opposition was filed after that date, namely on 08/05/2015.

On 29/05/2015, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. On 03/10/2015, after the extension of the cooling-off period, this time limit expired.

The opponent did not submit any additional evidence.

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

Martina GALLE

Francesca CANGERI

Gonzalo BILBAO TEJADA

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.