OPPOSITION No B 2 752 759

e-Blok Limited, 90-100 Sydney Street, Chelsea, London SW3 6NJ, United Kingdom (opponent)

a g a i n s t

Wild East Travels ApS, Frederiksberggade 2, 5th Floor, 1459 Copenhagen K, Denmark (applicant).

On 30/01/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 752 759 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 397 706, namely against all the services of Classes 39, 41 and 43. The opposition is based on European Union trade mark registration No 4 692 612 and European Union trade mark application No 15 464 779. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

European Union trade mark registration No 4 692 612 European Union trade mark application No 15 464 779
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.

The legal basis of an opposition based on Article 8(1)(b) and 8(5) EUTMR requires the existence of an earlier right within the meaning of Article 8(2) EUTMR.

According to Article 8(2) EUTMR, ‘earlier trade marks’ mean:

(a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the EU trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:

(i) EU trade marks;

(ii) trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property;

(iii) trade marks registered under international arrangements which have effect in a Member State;

(iv) trade marks registered under international arrangements which have effect in the Union;

(b) applications for the trade marks referred to in subparagraph (a), subject to their registration;

(c) trade marks which, on the date of application for registration of the EU trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the EU trade mark, are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention.

Moreover, the existence of an earlier registration has always been a necessary condition for the application of Article 8(5) EUTMR and that, as a consequence, the reference to Article 8(2) EUTMR should be limited to earlier registrations and to earlier applications subject to their registration (11/07/2007, T-150/04, Tosca Blu, EU:T:2007:214, § 55).

In the present case the opposition is based on two rights: European Union trade mark registration No 4 692 612 and European Union trade mark application No 15 464 779. As both are European Union trade marks the Office has all the facts of these rights on file.

Regarding European Union trade mark registration No 4 692 612

From the evidence maintained by the Office it can be seen that European Union trade mark registration No 4 692 612 expired on 31/10/2015.

The date of application for registration of the contested European Union trade mark application No 15 397 706 is 03/05/2016.

Therefore, this earlier right on which the opposition is based is no longer valid in accordance with Rule 19(2) EUTMIR.

Regarding European Union trade mark application No 15 464 779

While the opposition was explicitly based only on the above mentioned, no longer valid registration, the opponent also invoked this application in its explanation of grounds. From the evidence maintained by the Office it can be seen that for European Union trade mark application No 15 464 779 the date of application for registration is 23/05/2016 and no priority date was claimed.

The date of application for registration of the contested European Union trade mark application No 15 397 706 is 03/05/2016.

Therefore, this right on which the opposition is based is not an earlier mark in accordance with Article 8(2) EUTMR. For a right to be earlier than a contested application, it must have, in the absence of any priority, an application date that is prior to the date on which the contested EUTM application was filed. This is not the situation in the present case.

CONCLUSION

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

Marianna KONDAS

Ric WASLEY

Begoña URIARTE VALIENTE

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.