OPPOSITION No B 3 052 918

Novacity SAS, 65 Avenue du Président Kennedy, 59800 Lille, France (opponent), represented by Ondine Prevoteau, 4 Rue des Canonniers, 59841 Lille, France (professional representative)

a g a i n s t

Нова Сити Груп Оод, бул. Христо Ботев № 13, ет. 1, 1606 София, Bulgaria (applicant), represented by Illiana Marinova and Ivanka Pakidanska, 6 Trapezitsa Street, Fl. 1, Office 4, 1000 Sofia, Bulgaria (professional representatives).

On 19/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 052 918 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 792 201 for the figurative mark , namely against all the services in Classes 35, 36 and 37. The opposition is based on European Union trade mark application No 17 792 201 for the figurative mark . 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.

On 28/06/2018 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 03/11/2018.

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.

Furthermore, according to Article 8(1) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered:

1. if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected;

2. if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

According to Article 8(2) EUTMR, for the purposes of Article 8(1) EUTMR, ‘earlier trade marks’ are those trade marks with a date of application for registration which is earlier than the date of application for registration of the European Union trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks. According to subparagraph (b) of the same Article, ‘earlier trade marks’ can be applications for the trade marks referred to in subparagraph (a), subject to their registration.

In the present case, the opponent indicated in the notice of opposition that the opposition is based on European Union trade mark application No 17 792 201 for the figurative mark , that is to say, the contested mark. Furthermore, the opponent has indicated in the field ‘Entitlement’ of the notice of opposition that it is the owner/co-owner of the trade mark on which the opposition is based.

However, further to an examination with respect to the data contained in the Office’s database, the Opposition Division points out that the opponent is not, and has never been, owner or co-owner of the trade mark on which the opposition is based. The opponent has also not submitted any arguments or evidence with regard to its entitlement to file the opposition.

Moreover, for an invoked right to be earlier it must have, in the absence of any priority, an application date that is prior to the day on which the contested EUTM application was filed. Consequently, the mark on which the opposition is based (i.e. the contested European Union trade mark application No 17 792 201) cannot be held to be an earlier right within the sense of Article 8(2) EUTMR.

Furthermore, along with the notice of opposition, the opponent attached two excerpts from the French trade mark bulletin, BOPI 17/48 — Vol. I, page 314 (dated 01/12/2017) and BOPI 18/18 — Vol. II, page 106 (dated 04/05/2018), which display in total eight French trade mark registrations without any further specifications. The Opposition Division does not consider these excerpts as a valid invocation of additional grounds for opposition as it is not clear from these excerpts whether the opponent intended to invoke further grounds of opposition, and if so, which of the eight trade marks it refers to. Furthermore, it must be stressed that it is the responsibility of the opposing party to submit the necessary 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 the time limit specified by the Office, which in this case expired on 03/11/2018.

In its observations of 08/03/2019 the opponent submitted, inter alia, a copy of the French trade mark registration No 4 402 522 for the word mark ‘NOVACITY’ (in French, but some parts are translated), which may indicate the opponent’s intention of invoking said French trade mark registration as a ground for opposition in the present case. However, this submission came only after expiry of the abovementioned time limit. Moreover, the Opposition Division cannot proceed with the examination based on assumptions.

Furthermore, according to Article 7(5) EUTMDR, the Office will not take into account written submissions, or parts thereof, which have not been submitted in or not been translated into the language of the proceedings, within the time limit set 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.

Article 8(1) EUTMDR is an essentially procedural provision and it is apparent from the wording of that provision that when no evidence with regard to the substantiation of the earlier mark concerned is submitted within the time limit set by the Office, the opposition must be rejected as unfounded. It follows that the Office cannot take into account evidence submitted for the first time after the expiry of the time limit.

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

Renata COTTRELL

Tu Nhi VAN

Claudia MARTINI

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.