OPPOSITION No B 2 541 830

Zill GmbH & Co. KG, Hanns-Martin-Schleyer-Str. 31, 89415 Lauingen, Germany (opponent), represented by Charrier Rapp & Liebau, Fuggerstr. 20, 86150 Augsburg, Germany (professional representative)

a g a i n s t

British Polythene Limited, One London Wall, London EC2Y 5AB, United Kingdom (applicant), represented by Murgitroyd & Company, Scotland House, 165-169 Scotland Street, Glasgow G5 8PL, United Kingdom (professional representative).

On 18/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 541 830 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 of European Union trade mark application No 13 714 209, namely against all the goods in Classes 16, 17 and 19. The opposition is based on German trade mark registration No 39 755 863 and international trade mark registration No 706 341, designating Austria, Benelux, Denmark, Estonia, Finland, France, Hungary, Italy, Lithuania, Poland, Romania, Slovenia, Sweden and the United Kingdom. The opponent invoked Article 8(1)(b) EUTMR.

	POLIWRAP
Earlier trade marks	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.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier international trade mark registration No 706 341, designating Austria, Benelux, Denmark, Estonia, Finland, France, Hungary, Italy, Lithuania, Poland, Romania, Slovenia, Sweden and the United Kingdom on which the opposition is based.

On 24/07/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 29/11/2015.

The opponent did not submit any evidence concerning the substantiation of the earlier international trade mark registration No 706 341, designating Austria, Benelux, Denmark, Estonia, Finland, France, Hungary, Italy, Lithuania, Poland, Romania, Slovenia, Sweden and the United Kingdom.

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 this earlier mark.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely German trade mark No 39 755 863 and international trade mark registration No 706 341 designating Austria, Benelux, Denmark, Estonia, France, Finland, Hungary, Italy, Lithuania, Poland, Romania, Slovenia, Sweden and the United Kingdom.

The request was filed in due time and it is admissible as regards German trade mark No 39 755 863 given that this earlier trade mark was registered more than five years prior to the publication of the contested application. As regards the international registration No 706 341, designating Austria, Benelux, Denmark, Estonia, France, Finland, Hungary, Italy, Lithuania, Poland, Romania, Slovenia, Sweden and the United Kingdom, it is noted that, for the reasons stated above in this decision, the opposition must be rejected as unfounded as far as it is based on this earlier mark.

On 01/12/2015 the opponent was given two months to file the requested proof of use. The time limit for submitting proof of use expired on 06/02/2016.

According to Rule 22(2) EUTMIR, if the opposing party does not provide such proof before the time limit expires, the Office shall reject the opposition.

On the 28/01/2016 (within the deadline) the opponent submitted by fax five pages of observations, which contained references to enclosures but no enclosures were filed. On the 22/02/2016 (after the expiry of the deadline) the Office received the opponent’s five pages of observations and the enclosures by postal delivery. It follows from the wording of Rule 22(2) EUTMIR that the time limit laid down is a strict one, which means that the Office cannot take into account evidence submitted for the first time after the expiry of the time limit (18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 28). Therefore, it is considered that the opponent did not submit proof of use or show that there were proper reasons for non-use within the time limit set by the Office.

Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR, as far as it is based on this earlier mark.

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

Ric WASLEY

Sandra KASPERIUNAITE

Gueorgui IVANOV

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.