OPPOSITION No B 2 574 096

Runningman Corporation, 8th Floor Techzone Building, 213 Sen. Gil Puyat Avenue, 1203, Makati City, Philippines (opponent), represented by BRISTOWS LLP, 100 Victoria Embankment, London EC4Y 0DH, United Kingdom (professional representative)

a g a i n s t

UNIORG Services GmbH, Lissaboner Allee 6-8, 44269 Dortmund, Germany (applicant), represented by SPIEKER & JAEGER, Kronenburgallee 5, 44139 Dortmund, Germany (professional representative).

On 11/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 574 096 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 and services of European Union trade mark application No 14 102 115 “SBO4” namely against all the goods and services in Classes 9, 35 and 42. The opposition is based on European Union trade mark registrations No 6 639 215, “SBO”, No 6 639 397, “SBOBET”, and No 7 449 812, , and the non registered trademarks in United Kingdom “SBO”, “SBOBET” and . The opponent invoked Article 8(1)(b), Article 8(4) and (5) EUTMR.

SUBSTANTIATION OF NON REGISTERED TRADE MARKS

According to Article 8(4) EUTMR, 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 will not be registered where and to the extent that, pursuant to the Union 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 European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

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

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 09/09/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit, after extension, expired on 15/01/2019.

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

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as Article 8(4) is concerned.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so requests, the opponent must furnish proof that, during the five-year period 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 for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

The request was filed in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

On 15/01/2019 the opponent was given two months to file the requested proof of use. The deadline was extended until 20/05/2019 after the request made by the opponent.

The opponent did not submit any evidence concerning the use of the earlier trade marks on which the opposition is based. It did not argue that there were proper reasons for non-use either.

According to Article 10(2) EUTMDR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition.

Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR.

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

Begoña URIARTE VALIENTE

Jose Maria FERNANDEZ RUEDA

Maria José LOPEZ BASSETS

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.