OPPOSITION No B 3 065 789

Quinta do Vallado-Sociedade Agrícola, LDA., Vilarinho dos Freires, Quinta do Vallado, 5050-364 Peso Da Régua, Portugal (opponent), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

Miguel Jian, Aurelio Coquillat Pascual nº 5, entlo, 03201 Elche, Spain (applicant)

On 29/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 065 789 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 871 617 for the figurative mark , namely against wine in Class 33. The opposition is based on Portuguese trade mark registration No 168 333 for the word mark ‘GRANJA’. The opponent invoked Article 8(1)(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 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.

In the present case, the evidence filed by the opponent on 01/04/2019 to substantiate its earlier right consists of an extract in Portuguese and English from the online data base of the Portuguese Office for Industrial Property where the list of goods and services for which the mark is registered is not shown. The extract mentions in relation to this only: ‘Nice classification: 33’. In addition, the opponent filed one page document in Portuguese and English with goods in class 33. However, the said document does not identify the source it comes from.

Since in the Notice of Opposition, the opponent has also chosen the option to rely on online evidence from online official sources for substantiation purposes, the Opposition Division searched for the necessary information in TMView and on the page of the Portuguese Office for Industrial Property, but the missing information could not be found. The said sources make also only reference to ‘Nice classification: 33’, without mentioning exactly the goods for which the mark is registered in this class.

According to the Office practice, when the extract from an official database or the database accessed online does not contain all the required information, the opponent must supplement it with other documents from an official source showing the missing information. Since sometimes database extracts do not contain the list of registered goods and/or services of the respective earlier marks, the opponent must submit an additional document (e.g. a publication in the official bulletin) showing the list of goods and services.’

For the reasons explained above the evidence submitted by the opponent is not sufficient to substantiate the opponent’s earlier trade mark since the opponent has not proven the scope of protection of its earlier mark.

According to Article 8(1) and (7) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded.

COSTS

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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Mads Bjørn Georg JENSEN

Meglena BENOVA

Teodora TSENOVA-PETROVA

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.