OPPOSITION No B 3 037 655

Franmax, UAB, Savanorių pr. 247, 02300 Vilnius, Lithuania (opponent), represented by Metida Law Firm Zaboliene and Partners, Business Center Vertas Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative)

a g a i n s t

Lizard Holding, S.L., Naus Industrials Grillaire, Av. del Ravell s/n, local 4, 400 Andorra, Andorra (applicant), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, Nº 21-23, 5º A-B, 03002 Alicante, Spain (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 037 655 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 and services of European Union trade mark application No 17 333 022 for the word mark ‘BURATINO’, namely against some of the goods and services in Classes 32, 33, 35 and 43. The opposition is based on Lithuanian trade mark registration No 34 322 for the word mark ‘BURATINAS’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely Lithuanian trade mark registration No 34 322 for the word mark ‘BURATINAS’.

The request was filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

On 05/12/2018, the opponent was given until 10/02/2019 to file the requested proof of use. This time limit was subsequently extended until 10/04/2019.

The opponent did not submit any evidence concerning the use of the earlier trade mark on which the opposition is based within any of the time limits given by the Office. It did not argue that there were proper reasons for non-use either.

According to Article 10(2) EUTMDR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition.

Therefore, the opposition must be rejected pursuant to Article 47(2) and (3) EUTMR and Article 10(2) EUTMDR.

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, 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

Helen Louise MOSBACK

Mads Bjørn Georg JENSEN

Inés GARCÍA LLEDÓ

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.