OPPOSITION No B 2 593 120

Sabi-4 Ltd., 85 Aleksandar Stamboliyski Blvd. 4230 Asenovgrad, Bulgaria (opponent), represented by Zlatarevi Patent and Trademark, Dianabad 31b, b-1/14, 1172 Sofia, Bulgaria (professional representative)

a g a i n s t

Сигнал - 2 Оод, Ул. Брезовско Шосе No 145, 4003 Пловдив, Bulgaria (applicant), represented by Kostadin Manev, 73, Patriarh Evtimii Blvd., Fl 1, 1463 Sofia, Bulgaria (professional representative).

On 22/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 593 120 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

On 14/10/2015, the opponent filed an opposition against all the goods and services of European Union trade mark application No 14 360 622 for the figurative mark . The opposition is based on Bulgarian trade mark application No 2014130981N for the word mark ‘АМБЕЛИНО (AMBELINO)’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

SUBSTANTIATION

According to Article 76(1) EUTMR (in the version in force at the time of commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted 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 (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to submit 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 (in the version in force at the time of commencement of the adversarial part), within the period referred to above, the opposing party must also file evidence 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.

If the opposition is based on a trade mark that is not yet registered, the opposing party must submit a copy of the relevant filing certificate or an equivalent document emanating from the administration with which the trade mark application was filed (except in the case of a European Union trade mark application) – Rule 19(2)(a)(i) EUTMIR in the version in force at the time of commencement of the adversarial part).

In the present case the notice of opposition filed on 14/10/2015 was not accompanied by any evidence as regards the earlier right on which the opposition is based. On 19/10/2015 the opponent submitted a certificate from the Bulgarian trade mark and Patent Office and an extract from TM View (in the language of the proceedings). The TM View extract showed that the basis of the opposition, the Bulgarian trade mark No 2014130981N was still in application status and had been opposed.

On 26/10/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit evidence of the existence, validity and scope of protection of its earlier mark. This time limit expired on 29/02/2016.

On 07/01/2016 the opponent requested the suspension of the proceedings because Bulgarian trade mark application No 2014130981N had been opposed before the Bulgarian Patent Office by the EUTM applicant in the present proceedings, and this opposition procedure before the Bulgarian Office had been suspended as cancellation proceedings had been instigated against the mark on which that opposition was based.

In a letter dated 19/01/2016 the Office granted the requested suspension and stayed the proceedings.

Since 21/07/2017 the Office has repeatedly requested the opponent to provide an update on the status of the pending proceedings regarding the Bulgarian trade mark application No 2014130981N, which led to the suspension of the present opposition proceedings. On 26/09/2019 the Office reiterated its request to receive an update on the status of the earlier Bulgarian mark, informing the opponent that unless this update was provided, the proceedings would be resumed.

Since no reply was received, on 23/06/2020 the Office resumed the proceedings and gave the opponent until 28/08/2020 to submit further facts, evidence and arguments. At the opponent’s request this time limit was extended until 28/10/2020.

On 20/10/2020 the opponent submitted its observations stating that the Bulgarian trade mark application No 2014130981N, on which the present opposition is based, had been registered. The opponent added that its trade mark was registered following the Bulgarian Supreme Court’s decision that the Bulgarian trade mark registration No #64495 ‘Ambelino’ – on which the opposition against its Bulgarian trade mark application was based (owned by the applicant in the present proceedings) – had been filed in bad faith and was therefore invalidated.

In this regard the opponent submitted the ‘Court Decision 898/18.05.2016 for determination of the applicant’s (Signal-2 EOOD) “bad faith” when filing the application for Bulgarian trade mark “АМБЕЛИНО/AMBELINO”; reg. #64495’ and ‘Bulgarian Patent Office’s final Decision #14/17.01.2020 for entry of invalidation in the State register concerning the Bulgarian trade mark reg. #64495/10.04.2008; application #87877/19.06.2006’. These documents are in Bulgarian.

According to Rule 19(2)(a)(ii) EUTMIR (in the version in force at the time of commencement of the adversarial part) if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit 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.

As seen above, in the opponent’s submissions of 20/10/2020, it is clearly stated that the earlier Bulgarian trade mark No 2014130981N was registered after the conclusion of the opposition proceedings against it. However the opponent did not submit any evidence concerning the registration and/or the validity of its trade mark.

According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

As seen above, the opponent submitted some decisions of the Bulgarian Court and Bulgarian Patent Office. However, even if these decisions were considered equivalent documents emanating from the administration in accordance with the above mentioned Rule 19(2)(a)(ii) EUTMIR, they have not been translated into the language of the proceedings.

According to Rule 19(3) EUTMIR (in the version in force at the time of commencement of the adversarial part), the information and evidence referred to in paragraphs 1 and 2 must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document.

According to Rule 19(4) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted in or that have not been translated into the language of the proceedings, within the time limit set by the Office.

It follows that the above mentioned evidence filed by the opponent cannot be taken into account.

The opposition must therefore be rejected as unfounded.

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

Edith VAN DEN EEDE

Angela DI BLASIO

Chiara BORACE

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.