OPPOSITION No B 2 726 472

Univers Poche, 12, avenue d’Italie, 75013 Paris, France (opponent), represented by Nony, 11, rue Saint Georges, 75009 Paris, France (professional representative)

a g a i n s t

Shin-Kyu Choi, B-4101 (MokdongTrapalace Western Avenue) 299, Ohmok-ro, Yangcheon-Gu, Seoul, Republic of Korea (applicant), represented by Mitscherlich Patent- und Rechtsanwälte PartmbB, Sonnenstraße 33, 80331 München, Germany (professional representative).

On 08/02/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 726 472 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 of European Union trade mark application No 15 264 005, namely against some of the goods in Class 9. The opposition is based on French trade mark registrations No 154 200 343, No 093 680 456 and No 93 488 013. The opponent invoked Article 8(1)(a) and Article 8(5) EUTMR.

The present case concerns the following signs:

No 154 200 343, No 093 680 456, No 93 488 013	POCKET CAR MASTER
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 its earlier mark or earlier right, as well as evidence proving its 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.

According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 shall be in the language of the proceedings or accompanied by a translation. The translation shall be submitted within the time limit specified for submitting the original document. In the present case, the language of the proceedings is English.

According to Rule 19(4) EUTMIR, the Office shall not 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 its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition shall be rejected as unfounded.

On 11/07/2016, the opponent was notified that the examination of the notice of opposition filed had shown that the goods and services on which the opposition was based were in a language other than that of the proceedings (namely French) and that this information had to be provided in English.

On 22/08/2016, the opponent re-submitted the notice of opposition, with the goods and services of the earlier rights invoked listed in English. On 26/08/2016, the Office then notified the parties that the opposition had been found admissible, at least insofar as it was based on earlier French trade mark registration No 154 200 343. In this communication, the opponent was also given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations required to substantiate the earlier rights invoked. This time limit expired on 31/12/2016.

On 23/12/2016, the opponent submitted further facts, arguments and evidence in support of the opposition, which included, inter alia, extracts of the three French trade mark registrations on which the opposition is based from the French IPO’s (INPI) online database. These extracts were submitted in French, but no translations of the same into English were submitted.

In view of this, on 10/01/2017, the Office notified the parties that the earlier rights on which the opposition is based had not been substantiated and that the Office would rule on the opposition on the basis of the evidence before it.

In reply to this notification, on 17/01/2017, the opponent submitted a letter to the Office essentially claiming that it had submitted English translations of the earlier rights, that the opponent had fulfilled the requirement of identifying the earlier rights, that the Office had already accepted the translations submitted and that, if the Office had concerns regarding the scope of the translations provided, it would be more convenient to grant the opponent a new deadline for submitting new translations instead of closing the opposition proceedings ex officio.

First, it should be noted that the English translations of the list of goods and services submitted by the opponent in the notice of opposition were accepted by the Office as sufficient for the purpose of admissibility, that is, to identify the earlier marks, including their goods and services, on which the opposition was based. Nevertheless, the claims made by the opponent in the notice of opposition and the opponent’s re-submission of the same with the list of goods and services in English do not constitute evidence of the earlier rights’ actual existence, validity and scope of protection, or the opponent’s entitlement to them. Moreover, in the notification to the opponent of deficiencies in the notice of opposition sent by the Office on 11/07/2016, the Office also clarified that the documents and/or translations that may be submitted with a view to remedying that deficiency (on the admissibility of the opposition) may not be sufficient for substantiation of the opposition (proof of the existence and validity of the earlier right, etc.) as a whole. As a result, contrary to the claims made by the opponent in its letter of 17/01/2017, the purpose of substantiating the earlier rights is not merely to identify them (which is a matter of admissibility) but, rather, to prove – with evidence emanating from the administration by which the trade marks were registered – their existence, validity and scope of protection. According to Rule 19(3) EUTMIR, such evidence must be in the language of the proceedings or otherwise accompanied by a translation. If no translation or an insufficient translation has been submitted within the time limit set by the Office for submitting the original document, the evidence will not be taken into account in accordance with Rule 19(4) EUTMIR.

In this respect, according to Rule 98(1) EUTMIR, when a translation of a document is to be filed, the translation must identify the document to which it refers and reproduce the structure and contents of the original document.

As a result, the Office does not consider that information already given in the language of the proceedings in the notice of opposition, or in documents attached thereto or submitted later (e.g. explanation of grounds) amounts to a valid translation of a registration document, such as a registration certificate, even when such indications have been accepted for admissibility purposes. The translation has to be on a stand-alone basis and cannot be assembled from fragments taken from other documents.

No documents in English following the structure and contents of the extracts from INPI of the three French trade mark registrations that were submitted exclusively in French have been provided by the opponent. The English translations given in the notice of opposition do not follow the structure and contents of the extracts from INPI and do not enable the applicant or the Office to verify that the claims made in the notice of opposition concerning the earlier marks correspond to the current state of the French trade mark register. Moreover, the extracts of the earlier marks submitted in French may also contain other relevant information concerning the existence, validity and scope of protection of the earlier rights, which has not been translated into English, such as their status, possible limitations recorded or pending cancellation proceedings against them. It follows that the evidence submitted by the opponent cannot be taken into account.

Second, as regards the opponent’s request for a new time limit to be granted to allow the submission of new translations, as indicated above, the time limit given to the opponent to substantiate the earlier rights expired on 31/12/2016. According to Rule 71(1) EUTMIR, for an extension of a time limit to be granted, the request must be submitted before the original period expired. Taking into account that the time limit given to the opponent to submit evidence and translations of the earlier rights had already expired on 17/01/2017, when the request for an extension to submit such documents was made, a new time limit for the opponent to provide new translations cannot be granted.

In view of all the above, the earlier rights invoked in the opposition have not been duly substantiated as required under Rule 19(3) and Rule 98(1) EUTMIR.

Therefore, in accordance with Rule 20(1) EUTMIR, 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

Rasa BARAKAUSKIENE

Sam GYLLING

Denitza STOYANOVA-VALCHANOVA

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.