OPPOSITION No B 2 900 010

Yala Inc., 1732 1st Ave #28770, 10128 New-York, United States of America (opponent), represented by Cabinet Laurent & Charras, Le Contemporain 50, Chemin de la Bruyère, 69574 Dardilly Cedex, France (professional representative)

a g a i n s t

deJuristen, Heernislaan 19, 9000 Gent, Belgium (applicant), represented by Matthias Dobbelaere, Heernislaan 19, 9000 Gent, Belgium (professional representative).

On 18/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 900 010 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 and services in Classes 9 and 45 of European Union trade mark application No 16 372 518 for the word mark ‘YALA’. The opposition is based on international trade mark registration No 1 346 584 designating the European Union for the word mark ‘YALA’. 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 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 Office issued on 07/06/2017 an admissibility deficiency to the opponent since from the notice of opposition it appeared that the invoked international registration designating the EU was not earlier than the contested mark. In response to the admissibility deficiency, the opponent submitted on 14/06/2017 observations explaining that the invoked international registration enjoyed a priority on the basis of the US trade mark YALA No 87 238 500 and submitted evidence to prove the priority claim, as follows:

1. Printout from the EUIPO´s eSearch plus database with respect to the international trade mark registration No 1 346 584 designating the EU;

2. Database extract with respect to the US trade mark No 87 238 500;

3. Document of unknown origin with some particulars regarding the international trade mark registration No 1 346 584 designating the EU.

In this regard, it must be noted that an international trade mark registration designating the European Union has the same legal effect as a European Union trade mark registration, but it is not a European Union trade mark registration. The Office is not competent to administer international registrations and is not the administration by which international registrations are registered, which is the World Intellectual Property Organization (26/11/2014, T-240/13, Alifoods, EU:T:2014:994, § 28).

Consequently, to substantiate an opposition based on an international trade mark registration designating the European Union, the opponent must provide the Office with a copy of the relevant registration certificate (or equivalent documents issued by the administration with which the mark is registered) or an extract from the accepted official databases.

As regards international registrations, the following database is accepted (judgment of 26/11/2014, T-240/13, Alifoods, EU:T:2014:994):

• WIPO´s ROMARIN or ‘Madrid Monitor’ (the ‘short’ version of the extract being sufficient as long as it contains all the necessary information, but the extended or long version of the WIPO extract being preferable as it contains all the individual indications for each designated country, including the Statement of Grant of Protection).

• TMview (as long as it contains the relevant data, since it reflects the information obtained directly from the WIPO database).

On 29/06/2017, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. After the extension of the cooling-off period this time limit expired on 03/09/2019.

The opponent did not submit any additional evidence. 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 opponent’s earlier trade mark because the eSearch database extract does not emanate from the administration by which the trade mark was registered (WIPO), the extract with respect to the US trade mark on the basis of which priority has been claimed cannot serve to substantiate the validity, existence and scope of the invoked international registration and the last document lacks any identification in relation to its source.

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.

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

Denitza STOYANOVA – VALCHANOVA

Reet ESCRIBANO

Hanne 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.