OPPOSITION No B 2 926 700

Billionaire Trademarks B.V., Willibrordusstraat 12, 5087 BS Diessen, Netherlands (opponent), represented by Barzano' & Zanardo Milano S.P.A., Via Borgonuovo, 10, 20121 Milano, Italy (professional representative)

a g a i n s t

Benson & Benson LLC, 88 West Farm dr, 11747 Melville, United States of America (applicant), represented by Katarzyna Binder-Sony, ul. Poznańska 23/6, 00-685 Warszaw, Poland (professional representative).

On 11/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 926 700 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 in Class 25 of European Union trade mark application No 16 581 712 for the word mark ‘BILLIONAIRES ROW’. The opposition is based on international trade mark registration No 908 720 for the word mark ‘BILLIONAIRE’ designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARKS

The Opposition Division takes note of the fact that the address of the opponent has been changed during the opposition proceedings and that this change has been recorded in the register of the Office. Consequently, the new address of the opponent is the one mentioned in the heading of the present decision.

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.

Taking into account the fact that the opposition in the present case was filed on 13/07/2017, it is understood from the wording of Article 7(3) EUTMDR, that in order to rely on online evidence, there must be a formal declaration from the opponent by which it asks the Office to access the necessary information for the earlier trade mark from the relevant online official sources. Consequently, as it is optional, the opposing party should formally and proactively let the Office and the other party know it wishes to rely on this option. The declaration must be explicit and unconditional to be accepted. Therefore, the Office will not check the substantiation of any rights online where the opposing party has not expressly and unconditionally consented to the use of online evidence.

In the present case, the notice of opposition was not accompanied by any evidence as regards the earlier trade mark on which the opposition is based.

On 26/07/2017 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. After the extension of “cooling-off” period, this time limit expired on 01/10/2019.

The opponent did not submit any evidence concerning the substantiation of the earlier 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.

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

Monika CISZEWSKA

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.