OPPOSITION No B 2 588 096

Sun Mark Limited, Sun House, 428 Long Drive, Greenford, Middlesex UB6 8UH, United Kingdom (opponent)

a g a i n s t

TSI GmbH & Co. KG, Südring 26, 27404 Zeven, Germany (applicant), represented by Meissner Bolte & Partner Gbr, Hollerallee 73, 28209 Bremen, Germany (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 588 096 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 13 892 401, namely against all the goods in Class 32. The opposition is based on European Union trade mark registration No 6 103 063. The opponent invoked Article 8(1)(b) EUTMR.

ROBUST ENERGY	ROBUSTICA
Earlier trade mark	Contested sign

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 mark on which the opposition is based, namely European Union trade mark registration No 6 103 063.

The request was filed in due time and it is admissible given that the earlier trade mark was registered on 28/03/2008, more than five years prior to the publication of the contested application (02/07/2015).

On 29/10/2015, the opponent was given two months to file the requested proof of use. This time limit, originally due to expire on 13/02/2016, was subsequently extended until 13/04/2016.

The opponent submitted evidence of use of the earlier trade mark. However, although according to the opponent this evidence was posted via a courier service on 13/04/2016, and whereas the time limit for submitting proof of use expired on 13/04/2016, it was submitted only on 15/04/2016, namely the date of receipt by the Office. Indeed, a document’s date of notification or communication is the date on which that document is received or is deemed to be received by the addressee (including the Office) (30/01/2014, C 324/13 P, Patrizia Rocha, EU:C:2014:60, § 43). Moreover, 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.

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.

Therefore, the opposition must be rejected pursuant to Article 42(2) EUTMR and Rule 22(2) EUTMIR.

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

Begoña URIARTE VALIENTE

Martina GALLE

Pedro JURADO MONTEJANO

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.