OPPOSITION No B 2 568 304

Bonpom Limited, 38 Market Place, Kingston Upon Thames KT1 1JQ, United Kingdom (opponent), represented by Russell-Cooke LLP, 2 Putney Hill, Putney, London SW15 6AB, United Kingdom (professional representative)

a g a i n s t

"Il Bosco" Soc. Coop. A.R.L., Via A. Manzoni, 212 Vittoria, Italy (applicant).

On 02/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 568 304 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 13 746 805, for the word mark ‘Bon Tom’, namely against all the goods in Classes 29, 30 and 31. The opposition is based on the United Kingdom non-registered trade mark ‘BonPom’ for ‘food and drink other products in Nice classes 29, 30 and 31’. The opponent invoked Article 8(4) CTMR.

SUBSTANTIATION

According to Article 8(4) CTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Community legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a Community trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

According to Article 76(1) CTMR, 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) CTMIR, 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) CTMIR, within the period referred to above, the opposing party shall also file proof 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 an earlier right within the meaning of Article 8(4) of the Regulation, the opposing party shall file evidence of its acquisition, continued existence and scope of protection of that right, according to Rule 19(2)(d) CTMIR.

In the present case the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade.

On 03/09/2015, the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 08/01/2016.

The opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based.

According to Rule 20(1) CTMIR, if until expiry of the period referred to in Rule 19(1) CTMIR 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.

COSTS

According to Article 85(1) CTMR, 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 (7)(d)(ii) CTMIR, 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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 CTMR and therefore did not incur representation costs.

The Opposition Division

Alexandra APOSTOLAKIS

Martina GALLE

Gueorgui IVANOV

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.