OPPOSITION No B 2 859 240

Cupid International Ltd., Ingles Manor Castle Hill Avenue, Folkestone Kent CT20 2RD, United Kingdom (opponent)

a g a i n s t

Toni Abou Rached, Apt. 702, Marina Heights Tower Dubai Marina, Dubai, United Arab Emirates (applicant), represented by Yann Le Goater, 50 rue Rambuteau, 75003 Paris, France (professional representative).

On 12/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 859 240 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 119 323 for the figurative mark , namely against all the goods in Class 3. The opposition is based on United Kingdom trade mark registration No 3 199 058, for the word mark ‘CUPID’. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION

According to Article 76 (1) EUTMR (in the version in force at the time of commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted 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 (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to submit 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 (in the version in force at the time of commencement of the adversarial part), within the period referred to above, the opposing party must also file evidence 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 trade mark that is not yet registered, the opposing party must submit a copy of the relevant filing certificate or an equivalent document emanating from the administration with which the trade mark application was filed (except in the case of a European Union trade mark application) — Rule 19(2)(a)(i) EUTMIR in the version in force at the time of commencement of the adversarial part).

If the opposition is based on an application, the opponent must submit evidence that the application was filed at the national office. Once the earlier application has proceeded to registration, the opponent must submit evidence of said registration. If, after the adversarial part of the proceedings, the opponent has not provided evidence that the national application did, in fact, proceed to registration before the time limit set in Article 7(1) EUTMDR, the opposition will be rejected as unfounded under Article 8(7) EUTMDR. An application certificate is not sufficient to prove that the trade mark has been registered and cannot serve to prove the existence of a trade mark registration.

In the present case, the evidence filed by the opponent consists of an applicationcertificate dated 28/11/2016. After the closure of the adversarial part, the opponent was requested to inform the Office regarding the status of the earlier United Kingdom trade mark application.

The opponent did not submit any evidence concerning the status and/or the registration of the earlier trade mark. However, on 23/05/2019, the applicant submitted a screenshot from the United Kingdom Intellectual Property Office, showing that the earlier United Kingdom trade mark No 3 199 058 is now registered. According to this document, the trade mark was registered on 21/04/2017.

On 12/04/2017 the opponent was given two months, commencing after the end of the cooling-off period, to substantiate the earlier right. This time limit was extended and expired on 17/10/2017. Therefore, the opponent should have submitted the registration certificate to the Office within the aforementioned time limit.

According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), 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 will be rejected as unfounded.

The opposition must therefore be rejected as unfounded.

COSTS

According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Vita VORONECKAITE

Cindy BAREL

Alicia BLAYA ALGARRA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.