OPPOSITION No B 2 879 222

E-Play, 590 Kingston Road, SW20 8DN, London, United Kingdom (opponent), represented by Marcin Krzysztof Barycki, Kancelaria Prawna, ul. Bonifraterska 15/26, 00-213, Warsaw, Poland (professional representative)

a g a i n s t

RSQ Management Spółka z ograniczoną odpowiedzialnością, Flory 9/7, 00-586, Warsaw, Poland (applicant), represented by Marcin Krzysztof Kroll, ul. Jana Kasprowicza 119/55, 01-949 Warsaw, Poland (professional representative).

On 20/04/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 879 222 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 2 824 764 for the figurative mark . The opposition is based on Poland trade mark application No Z.461 433, for the word mark ‘LEADERS’ PIT-STOP’. 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 a registered trade mark that is not a European Union trade mark, the opposing party must submit 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 (in the version in force at the time of commencement of the adversarial part).

In the present case, the time limit for the opponent to substantiate the earlier right expired on 31/08/2017. The evidence filed by the opponent on 14/04/2017, together with the notice of opposition, consists of:

• An extract from the database of the Patent Office of the Republic of Poland, containing data relating to the application procedure of the earlier mark, where the applicant is the company E-play Consulting Ltd.

• A decision of granting of protection referring to the earlier mark issued on 06/03/2017 by the same authority, where the owner is Travers Consulting spolka z ograniczona odpowiedzialnoscia. The document indicates that the grant of protection is subject to the payment of a fee within three months following delivery of the decision.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark, because it does not contain all the necessary elements.

In particular, both the excerpt from the Polish Patent Office’s database and the decision of granting of protection refer to entities, namely E-Play Consulting Ltd and Travers Consulting spółka z ograniczoną odpowiedzialnością, which cannot be linked to the opponent, namely E-Play.

In its observations of 14/04/2017, the opponent claimed that "after the decision was issued by Polish Patent Office, the trademark was transferred from Travers Company, the former owner is in the decision of PPO to EPlay Company".

Regardless of the fact that this statement is rather confusing in view of the information regarding ownership contained in the above documents, the Office notes that it can be drawn from the date of the abovementioned decision of granting of protection to the earlier mark in favour of Travers Consulting spółka z ograniczoną odpowiedzialnością, namely 06/03/2017, that the claimed transfer took place already before the date of filing of the opposition notice (14/04/2017). In this respect, it should be noted that where the earlier mark has been transferred before the opposition is filed, evidence of such transfer has to be provided within the time limit for substantiation, which, as indicated above, expired on 31/08/2017. However, in the present case, no evidence of the transfer was provided whether it be from the opponent, E-Play Consulting Ltd or Travers Consulting spółka z ograniczoną odpowiedzialnością.

For the sake of completeness, it should be noted that even if the opponent or its successor in title had provided evidence of the transfer of the earlier mark, the abovementioned copy of the decision of granting of protection issued by the Polish Patent Office is equally insufficient to substantiate the opponent’s earlier trade mark. Indeed, this document cannot serve to prove the existence, validity and scope of protection of the earlier mark as it is clearly specified in the decision that it is subject to a condition, namely the payment of a fee within three months following delivery of the decision which was issued on 06/03/2017. Such payment should thus have taken place before 07/06/2017 at the very latest, and logically the protection of the earlier trade mark would have been effective as from this date, and in any event well before the expiry of the time limit to substantiate the earlier mark. As a consequence, not only should the opponent or a successor in title have provided evidence of the transfer of the earlier mark, as already indicated above, but it should also have provided evidence of the existence, validity and scope of protection of its earlier mark or earlier right, namely a copy of the relevant registration certificate or equivalent documents emanating from the administration by which the trade mark was registered.

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

Martina GALLE

Orsola LAMBERTI

Torben Niels-henrik Engholm KRISTENSEN

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.