OPPOSITION No B 2 888 108

Kask S.P.A., Via Firenze 5, 24060 Chiuduno (BG), Italy (opponent), represented by Barzano' & Zanardo Milano S.P.A., Via Borgonuovo 10, 20121 Milano, Italy (professional representative)

a g a i n s t

Mikkel Bertelsen, Gershøjvej 108f, 4070 Kirke Hyllinge, Denmark (applicant), represented by Fondia Oyj, Lönnrotinkatu 5, 00101 Helsinki, Finland (professional representative).

On 14/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 888 108 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 16 259 401 for the word mark 'KLASK', namely against some of the goods in Class 28. The opposition is based on Italian trade mark registration No 001 234 974 for the figurative mark , Italian trade mark application No 302 016 000 052 486 for the figurative mark and international trade mark registration No 001 163 154 designating Czech Republic, Spain, Ireland, Cyprus, Austria, Lithuania, United Kingdom, Latvia, Estonia, Slovenia, Portugal, Bulgaria, Romania, Slovakia, Denmark, Poland, Hungary, Greece, Finland, Germany and France for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION

According to 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 Article 7(1) EUTMDR, 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 Article 7(2) EUTMDR, 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) — Article 7(2)(a)(i) EUTMDR. Where the evidence concerning the filing of the trade mark application is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR.

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 Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR.

I. Italian trade mark registration No 001 234 974 and Italian trade mark application No 302 016 000 052 486.

In the present case, the evidence filed by the opponent together with the opposition notice consists of a certificate for the trade mark registration from the Italian Patent and Trademark Office and an extract from the Italian Patent and Trademark Office database for the trade mark application, together with their translations.

According to the document referring to earlier Italian trade mark registration No 00 234 974, the mark was filed on 11/02/2009. In Italy, the registration of a mark lasts 10 years and the starting point of the 10 years is the filing date. Consequently, the document proves the protection until 11/02/2019. The time limit for the opponent to substantiate its earlier mark was until 15/07/2019 and the opponent did not submit any evidence concerning the renewal of this earlier trade mark. Therefore, the Opposition Division does not have any evidence of the existence, validity and scope of this mark at present.

According to the document referring to earlier Italian trade mark application No 302 016 000 052 486, the mark was filed on 23/05/2016. In its observations of 12/07/2019 the opponent stated that this application proceeded to registration on 19/07/2018. However, the time limit for substantiation of the earlier right was until 15/07/2019 and based on the opponent’s statement, this earlier mark proceeded to registration before the expiry of the time limit for substantiation of the earlier right. The opponent did not submit any evidence concerning the registration of this earlier trade mark. Therefore, the Opposition Division does not have any evidence of the existence, validity and scope of this mark at present.

As mentioned above, on 10/05/2017 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit was extended and expired on 15/07/2019.

The opponent did not submit any further evidence concerning the substantiation of the earlier trade marks. Moreover, the opponent did not make reference to evidence accessible online from a source recognised by the Office.

The evidence mentioned above is not sufficient to substantiate the above mentioned opponent’s earlier trade marks.

According to Article 8(1) and (7) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, 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, as far as it is based on these earlier marks.

II. International registration No 001 163 154.

Concerning this earlier right, the notice of opposition was not accompanied by any evidence concerning the existence, validity and scope of protection, as well as evidence proving the entitlement to file the opposition.

The opponent did not submit any further evidence concerning the substantiation of this earlier trade mark before the time limit expiring on 15/07/2019. Moreover, the opponent did not make reference to evidence accessible online from a source recognised by the Office.

According to Article 8(1) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not submitted any evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, or where the evidence submitted is manifestly irrelevant or manifestly insufficient, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

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

Biruté SATAITE-GONZÁLEZ

Maria José LÓPEZ BASSETS

Sabine HACKSTOCK

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.