OPPOSITION No B 2 921 313

Δημ. Βλαχονικολοσ Και Σια Οε, Νεα Εισοδοσ Ηρωων Πολυτεχνειου, 24100, Καλαματα, Greece (opponent), represented by Ioannis Kopsidas, 3rd Septembriou Street 43A, 104 33, Athens, Greece (professional representative)

a g a i n s t

Κοσμοσ Σπορ Αε, 62 ΜΑΡΤΥΡΩΝ 148, 71303, ΗΡΑΚΛΕΙΟ, Greece (applicant), represented by Γεωργια Καρρα Αγίου Γεωργίου, 54, 15451, Νέο Ψυχικό Αττικής Greece (professional representative).

On 23/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 921 313 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. 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 services of European Union trade mark application No 16 509 416 (figurative) in Class 35. The opposition is based on Greek trade mark registration No 241 314 (figurative). The opponent invoked Article 8(1)(a) and (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 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 evidence submitted by the opponent, although it is neither a filing certificate nor an extract from the trade mark register, is an acceptable means of evidence for the purposes of substantiation.

However, as raised by the applicant in his observations dated on 29/01/2018 (page n°2) there is no indication in that document that the earlier right has been registered. Indeed, account must be taken that pursuant to Article 2(2)(b)(i) EUTMDR, the opponent must indicate, among others, whether the earlier mark is registered or if it is based on an application for registration of that mark. Further, pursuant to Article 2(2)(d) EUTMDR, the opponent must indicate, in the case of an earlier trade mark application or registration, the filing date, and, where available, the registration date.

It must also be taken into consideration that the legal and procedural status of a trade mark, and particularly, the existence of any opposition procedure brought against it, is an essential trade mark element which must be proven by the opponent (see 29/09/2011, T 479/08, Shoe with two stripes, EU:T:2011:549, § 52). In the notice of opposition, the opponent claimed that the opposition was based on a trade mark registration and indicated the registration date and number. The attached document, however, does not prove the existence of a trade mark registration, but only of a trade mark application.

The applicant correctly argues in its observations that the examiner’s decision accepting the trade mark application at issue is followed by the publication of that trade mark application for opposition purposes. Furthermore, the applicant submitted evidence that an opposition had been brought against that trade mark application in due time, and that it was served on the opponent on 06/06/2017, i.e. before the introduction of the present opposition proceedings (04/07/2017).

It follows that, contrary to the claim in the notice of opposition form, the evidence does not prove a trade mark registration, and consequently, any registration date and number.

The above findings are not affected by the fact that, otherwise, a trade mark application is a valid basis for an opposition and that the evidence constitutes adequate proof of such an application. As stated above, the opponent did not claim to have based its opposition on a trade mark application.

The opposition must therefore be rejected as not substantiated.

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

Keeva DOHERTY

Jessica LEWIS

Loreto URRACA LUQUE

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.