OPPOSITION No B 2 676 586

Deacero, S.A.P.I. de C.V., Av. Lázaro Cárdenas 2333, Ote. Col. Valle Oriente San Pedro Garza García, Nuevo León, México (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

Neue Labs AB, Heleneborgsgatan 14, 11732 Stockholm, Sweden (applicant), represented by Synch Advokat AB, Birger Jarlsgatan 6 P.O. Box 3631, 103 59 Stockholm, Sweden (professional representative).

On 19/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 676 586 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 goods and services of European Union trade mark application No 14 913 818, namely against some of the goods and services in Classes 9 and 41 and all the services in Class 42. The opposition is based on European Union trade mark registration No 5 276 829. The opponent invoked Article 8(1)(a) and (b) EUTMR.

	AUTOMAT
Earlier trade mark	Contested sign

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

As regards international registrations designating the European Union, the ‘date of publication’ of the contested mark within the meaning of Article 42(2) EUTMR for the purposes of establishing the five-year period of use obligation for the earlier mark is considered to be six months after the first republication of the international registration, that is the beginning of the opposition period (Article 156 EUTMR in conjunction with Article 152 EUTMR). The opponent’s mark is under use obligation, if at the beginning of the opposition period, namely six months after the date of the first republication of the IR, it had been registered for more than five years.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based European Union trade mark registration No 5 276 829.

The request was filed in due time and it is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.

On 06/09/2016 the opponent was given two months to file the requested proof of use.

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

According to Rule 22(2) EUTMIR, if the opposing party does not provide such proof before the time limit expires, the Office shall reject the opposition.

Therefore, the opposition must be rejected pursuant to Article 42(2) EUTMR and Rule 22(2) EUTMIR.

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

Loreto URRACA LUQUE

Cristina CRESPO MOLTO

Steve HAUSER

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.