OPPOSITION No B 2 903 170

Browser London Limited, Wadebridge House, 16 Wadebridge Square, Poundbury, Dorchester DT1 3AQ, United Kingdom (opponent), represented by Trademark Cafe Limited, Cricket Chambers, 16 Ranelagh Grove, St Peters, Broadstairs, Kent CT10 2TE, United Kingdom (professional representative)

a g a i n s t

Clowdy Limited, Virginia House, 5-7 Great Ancoats Street, Manchester M4 5AD, United Kingdom (applicant), represented by HGF Limited, 4th Floor, Merchant Exchange Building, 17-19 Whitworth Street West, Manchester M1 5WG, United Kingdom (professional representative).

On 16/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 903 170 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 16 365 421 (figurative mark), namely against all the services in Class 35. The opposition is based on UK trade mark registration No 3 069 767 ‘TWINE’ (word mark), and UK non-registered trade marks ‘TWINE’ (word mark) and (figurative mark). The opponent invoked Article 8(1)(b) EUTMR in relation to its registered mark and Article 8(4) EUTMR in relation to the two last marks.

SUBSTANTIATION

1) UK trade mark registration No 3 069 767

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 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.

In the present case, the notice of opposition was not accompanied by any evidence as regards the earlier trade mark registration on which the opposition is based, namely UK trade mark registration No 3 069 767.

On 08/06/2017 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. Following the extension of the aforementioned cooling-off period and the further extension of the opponent’s time limit to submit the abovementioned material, the concerned opponent’s time limit expired on 13/10/2019.

The opponent did not submit any evidence concerning the substantiation of its earlier registered trade mark. 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.

2) UK non-registered trade marks

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

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 will be 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 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 Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, including, where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence, as well as evidence proving its entitlement to file the opposition and evidence showing use of that right in the course of trade of more than mere local significance.

Where the evidence concerning the filing or registration of the sign claimed or the evidence concerning the content of the relevant national law is accessible online from a source recognised by the Office, the opponent may provide such evidence by making a reference to that source.

In the present case, the notice of opposition was not accompanied by any evidence regarding the earlier signs in the course of trade, namely UK non-registered trade marks ‘TWINE’ (word mark) and (figurative mark).

On 08/06/2017 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. Following the extension of the aforementioned cooling-off period and the further extension of the opponent’s time limit to submit the abovementioned material, the concerned opponent’s time limit expired on 13/10/2019.

The opponent submitted no evidence of the acquisition of the concerned earlier rights, nor did it provide the reference to and wording of the provisions of the national law on which it bases its case by adducing official publications of the relevant provisions or jurisprudence or made out its case under that law. Moreover, the opponent did not make reference to evidence accessible online from a source recognised by the Office.

Furthermore the opponent did not submit any evidence of use in the course of trade of these earlier signs on which the opposition is based.

Given that the necessary requirements of Article 8(4) EUTMR are not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

CONCLUSION

In view of all the foregoing, the opposition must 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

Renata COTTRELL

Dzintra BRAMBATE

Hanne Kirsten THOMSEN

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.