OPPOSITION No B 3 061 380

Tri Star Ltd, Polevaya str. 5, Cherniakhovka village, Kirovograd region, Cherniakhovka, Ukraine (opponent), represented by Ionut Lupsa, Calea 13 Septembrie no. 90, 1.02, 050726 Bucharest, Romania (professional representative)

a g a i n s t

Ionel-Alin Nita, Sos. Oltenitei 133, bl. 55, sc. 1, ap. 4, Bucuresti, Romania (applicant), represented by Eugen Ardeleanu, Aleea Fetesti nr. 11, bl. F1, ap. 26, sector 3, 032562 Bucuresti, Romania (professional representative).

On 14/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 061 380 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 of European Union trade mark application No 17 772 609 for the figurative mark , namely against all the goods in Class 30. The opposition is based on the German, Romanian and Ukrainian non-registered trade marks (figurative). The opponent invoked Article 8(3) EUTMR.

UNAUTHORISED FILING BY AN AGENT OR REPRESENTATIVE OF THE TRADE MARK OWNER — ARTICLE 8(3) EUTMR

According to Article 8(3) EUTMR, upon opposition by the proprietor of the trade mark, a trade mark will not be registered where an agent or a representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action.

In the absence of any restriction in Article 8(3) EUTMR, and in view of the need to provide effective protection to the legitimate interests of the real proprietor, the term ‘trade marks’ should be interpreted broadly and covers not only registered trade marks, but also applications and non-registered trade marks. In contrast, the express reference to ‘trade marks’ means that Article 8(3) EUTMR does not apply to mere signs used in the course of trade, other than unregistered trade marks.

According to Article 46(1)(b) EUTMR, the right to file an opposition on the grounds of Article 8(3) EUTMR is reserved only for the proprietors of earlier trade marks.

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, according to Article 7(2)(c) EUTMDR, where the opposition is based on the absence of the proprietor’s consent as referred to in Article 8(3) EUTMR, evidence of the opposing party’s proprietorship of the prior trade mark and of its relationship with the agent or representative shall be provided. 

It follows that the opponent has to prove that it was the rightful proprietor of the earlier marks when the opposition was filed.

It is important to note that the evidence required in each case will depend on the kind of right relied upon.

It has been stated above that non-registered trade marks fall within the term ‘trade marks’ in the sense of Article 8(3) EUTMR. Consequently, non-registered trade marks are covered by this provision provided that the law of the country of origin recognises rights of this kind.

In the present case, the opponent invoked Article 8(3) EUTMR, and the opposition is based on non-registered trade marks in Germany, Romania and Ukraine. The opponent shall therefore provide the Office with evidence establishing that under the laws of those countries it has acquired exclusive rights for its claimed non-registered trade marks. The notice of opposition was, however, not accompanied by any evidence in this regard.

On 18/09/2018 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 23/01/2019.

The opponent did not submit the necessary evidence mentioned above concerning the substantiation of the earlier non-registered trade marks.

For this reason, an assessment on whether or not the conditions in the laws of those countries for recognising the invoked rights are fulfilled cannot be made.

Therefore, it is impossible for the Opposition Division to assess whether the evidence of use submitted by the opponent in relation to the non-registered trade marks is sufficient to successfully rely on these rights in the respective countries.

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.

It follows from the above that the opponent has failed to establish that it has acquired exclusive rights for the invoked non-registered trade marks in the countries in question.

For the sake of completeness, the Opposition Division notes that, with a view of proving the agent relationship, the opponent submitted a contract allegedly signed between the parties. However, this contract is not signed by the applicant and, therefore, the relationship between the parties cannot be considered to have been sufficiently established. Moreover, the opponent makes reference to submissions of the applicant in response to an objection by the Office against the contested application; however, no objection has been raised by the Office in relation to the contested application in question. For this reason, even if the opponent had submitted evidence establishing that under the laws of the countries in question it has acquired exclusive rights for its claimed non-registered trade marks, one of the cumulative criteria in Article 8(3) EUTMR is not fulfilled.

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

Teodora Valentinova TSENOVA-PETROVA

Mads Bjørn Georg JENSEN

Denitza STOYANOVA-VALCHANOVA

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.