OPPOSITION No B 2 627 340

Atmail Pty Ltd, U22, 224 David Low Way, Peregian Beach QLD 4573, Australia (opponent), represented by Lubberger Lehment - Kanzlei für Gewerblichen Rechtsschutz, Meinekestr. 4, 10719 Berlin, Germany (professional representative)

a g a i n s t

Automatic Trans S.L., Ronda Sant Pere 13, 5º, 2ª, 08010 Barcelona, Spain (applicant), represented by Marquespatent S.L., Tuset 34, Principal B-C-D, 08006 Barcelona, Spain (professional representative).

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

DECISION:

1. Opposition No B 2 627 340 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 services of European Union trade mark application No 14 520 423, namely against all the services in Classes 38 and 42 and some of the services in Class 41. The opposition is based on international trade mark registration No 1 258 621 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.

The opponent argues that since international registrations designating European Union have the same effect as a European Union trade mark, same formal requirements should apply, in particular as both are listed in the trade mark register of the Office. To this effect, it is reminded that Rule 19(2)(a) EUTMIR explicitly only exempts European Union trade marks from the obligation to submit evidence of registration. An analogy cannot be drawn with international trade marks designating the European Union because the registration authority for international trade marks is the World Intellectual Property Organization (WIPO), which is thus the original source of information about the existence, validity and scope of protection of the international trade marks. The fact that international marks are present in some databases maintained by the EUIPO (they are not in the Register of EU trade marks kept by the EUIPO according to Article 87 EUTMR) is irrelevant because the information displayed in those databases is not original WIPO data and may not be completely up to date.

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 22/12/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This letter was accompanied by specific instructions to prove the existence, ownership and validity of the earlier right and information that the opposition will be rejected when the evidence substantiating the earlier mark is not filed within the time limit (Rule 20(1) EUTMIR). This time limit expired on 27/04/2016.

The opponent submitted the required evidence on 09/05/2016, that is, after the expiry of the abovementioned time limit, only after it received a letter from the Office informing that the opponent failed to substantiate the earlier right.

According to Rule 19(4) EUTMIR, the Office shall not (emphasis added) take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

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 (emphasis added) as unfounded.

The opponent refers to Article 76(2) EUTMR and the judgments of the European Court of Justice C-29/05 P (13/03/2007, C‑29/05 P, Arcol, EU:C:2007:162) and C-621/11 P (18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484) and argues that submission of facts and evidence by the parties remains possible after the expiry of the time limits and that EUIPO has a broad discretionary power to decide whether the belated documents will be taken into account.

According to Article 76(2) EUTMR, the Office may disregard facts or evidence which are not submitted in due time by the parties concerned.

According to settled case-law, it can be inferred from the wording of Article 76(2) EUTMR that, as a general rule and unless otherwise specified (emphasis added), the submission of facts and evidence by the parties remains possible after the expiry of the time-limits to which such submission is subject under the provisions of that regulation and that [the Office] is in no way prohibited from taking account of facts and evidence which are submitted or produced late (13/03/2007, C‑29/05 P, Arcol, EU:C:2007:162, § 42).

Nonetheless, although parties to proceedings before [the Office] may submit facts and evidence after expiry of the periods specified for that purpose, the possibility to do so is not without conditions, but is subject to there being no provision to the contrary. It is only if that condition is met that [the Office] has the discretion — attributed to it by the Court of Justice when interpreting Article 76(2) of Regulation No 207/2009 — to take into account facts and evidence submitted out of time (12/12/2007, T‑86/05, Corpo livre, EU:T:2007:379, § 47).

In the present case, there is a provision which precludes taking into account of the material submitted late, namely Rule 20(1) EUTMIR, which states that 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 European Court of Justice already established that Rule 20(1) EUTMIR does not preclude the Boards of Appeal from exercising their discretionary power under Article 76(2) EUTMR in order to take account of facts and evidence submitted or produced late (03/10/2013, C‑120/12 P, Proti Snack, EU:C:2013:638, § 33). However, the Court, in that case (which has been applied and quoted by the General Court consistently ever since, see, for example 01/07/2014, T‑480/13, YouView+, EU:T:2014:591, § 25), based its argumentation on the provisions of Rule 50(1) EUTMIR which sets specific rules for the examination of appeals, that is, this Rule can only be applied by the Boards of Appeal (03/10/2013, C‑120/12 P, Proti Snack, EU:C:2013:638, § 24 to 33). Rule 50(1) third subparagraph specifically allows the Boards to take additional or supplementary evidence into account even when this evidence was not provided within the time limits. This possibility is not granted to the Opposition Division.

Consequently, applying the provisions of the EUTMR and EUTMIR, as interpreted in settled case law of the European Union Courts, the Opposition Division has, in the present case, no discretionary power to take the late document into account.

Only for the sake of completeness, the Opposition Division notes that since the belated evidence was the initial and only evidence submitted by the opponent to substantiate the earlier right, it can in no way be considered to be ‘additional or supplementary evidence’ even for the purposes of Rule 50(1) EUTMIR.

Since the evidence filed late cannot be taken into account and, thus, the opponent did not prove the existence, validity and scope of protection of earlier international trade mark registration No 1 258 621 within the prescribed time limit, the opposition must 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.

The Opposition Division

Péter SIPOS

Michaela SIMANDLOVA

Vita VORONECKAITĖ

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.