OPPOSITION No B 2 600 875

Zadafo Verwaltungsgesellschaft mbH, Gutenbergring 53, 22848 Norderstedt, Germany (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Miss Roberta s.r.l., Piazza Umberto l, N. 3, 70131 Bari Carbonara (BA), Italy (applicant).

On 25/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 600 875 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trademark application No 14 392 021, namely against all the goods in Class 03. The opposition is based on international trade mark registration (IR) No 959914A designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

Earlier trade mark	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 notice of opposition was not accompanied by any evidence as regards the earlier trade mark on which the opposition is based.

On 03/11/2015 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 15/03/2016.

On 14/03/2016 the opponent requested a two month extension of this time limit which was granted by the Office on 18/03/2016. This time limit expired on 15/05/2016.

The opponent did not submit any evidence concerning the substantiation of the earlier trade mark.

For European Union trade mark registrations the examination of the substantiation is done ex officio by the Office with respect to the data contained in the EUIPO’s database. However, the earlier mark in the present case is not a European Union trade mark registration, administrated by the EUIPO, but an international registration designating the European Union, administrated by WIPO. Therefore, the earlier international trade mark registration designating the European Union should be substantiated with certificates emanating from WIPO or an extract from WIPO’s ROMARIN database or TMview, as the information in this database is updated daily by WIPO. In the present case no certificate was presented to substantiate the earlier right.

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

André BOSSE

Lynn BURTCHAELL

Martin EBERL

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.