OPPOSITION No B 2 599 580

OK A.m.b.a., Åhave Parkvej 11, 8260 Viby J, Denmark (opponent), represented by Gorrissen Federspiel, Silkeborgvej 2, 8000 Aarhus C, Denmark (professional representative)

a g a i n s t

Othman Ktiri Group SLU, Avd. Gran Vía Asima, 36 A, 07009 Palma de Mallorca, Spain (applicant), represented by Logicautomoción S.L. - Ignacio Rico Gomis, Calle Gran Vía Asima, 36 A, Polígono Son Castelló, 07009 Palma de Mallorca, Spain (employee representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 599 580 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 282 222, namely against all the services in Classes 35, 36 and 39. The opposition is based on Danish trade mark registrations No VR 2004 03320 and No VR 2013 01591 (both for the figurative mark “OK”) and No VR 2004 03321 and No VR 2013 01590 (both for the word mark “OK”). The opponent invoked Articles 8(1)(b) and 8(5) EUTMR.

word mark OK and figurative mark
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 evidence filed by the opponent consists of a translation of the registration certificate for each of the four earlier marks.

On 16/12/2015 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 28/04/2016.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade marks, because the opponent failed to file copies of the official Danish registration certificates (including proof of renewal for the earlier marks No VR 2004 03320 and No VR 2004 03321).

In its submission of 13/04/2016 the opponent referred to previous submissions in other opposition cases, namely appendices 3 - 17 filed on 03/07/2013 in opposition B 2 090 259 and appendices 5 - 7 filed on 28/05/2014 in opposition B 2 304 411. However, these appendices relate to the opponent’s claim that the earlier marks have a reputation and do not contain copies of the registration certificates.

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.

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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Peter QUAY

Beatrix STELTER

Michele M. BENEDETTI-ALOISI

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.