OPPOSITION No B 3 055 324

Sociedad de Integración Franquicias y Servicios, S.L., C/ Rosal 62 3, 33009 Oviedo/Asturias, Spain (opponent), represented by Aseprin, S.L., Calle Pradillo, 18-1º, 28002 Madrid, Spain (professional representative)

a g a i n s t

Johannes Giesser Messerfabrik GmbH, Johannes-Giesser-Strasse 1, 71364 Winnenden, Germany (applicant), represented by Geitz Truckenmüller Lucht Christ Patentanwälte PartGmbB, Kirchheimer Str. 60, 70619 Stuttgart, Germany (professional representative).

On 14/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 055 324 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 17 902 500 “GIESSER” (word mark), namely against all the goods in Class 8. The opposition is based on Spanish trade mark registration No M2 601 885 (figurative mark) for Class 8. 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.

According to Article 7(4) EUTMDR, any filing, registration or renewal certificates or equivalent documents referred to in Article 7(2)(a), (d) or (e) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party of its own motion within the time limit specified for submitting the original document, in the present case, within the time limit for substantiation of the opposition. Only what is submitted and translated within this time limit is taken into account.

The requirement of translating the evidence of substantiation also relates to online evidence referred to by the opponent, where the language of the online evidence is not the same as the language of the proceedings. This follows from Article 7(4) EUTMDR, which states that ‘evidence accessible online’ shall also either be in the language of the proceedings, or shall be accompanied by a translation.

According to Article 25(1) EUTMIR, when a translation of a document is to be filed, the translation must identify the document to which it refers and reproduce the structure and contents of the original document. Furthermore, according to the same provision, where a party has indicated that only parts of the document are relevant, the translation may be limited to those parts.

On 19/06/2018 the opponent filed notice of opposition claiming online substantiation of its earlier Spanish trademark: “The opposing party accepts that the necessary information for this trade mark is imported from the relevant online official database, accessible through TMVIEW, and that this source is used for substantiation purposes without prejudice to its right or obligation to provide any additional information that may be necessary to comply with the substantiation requirements of Article 7(2) and (4) EUTMDR”.

The time limit for substantiating the earlier trademark on which the opposition is based, expired on 18/02/2019. Following the opponent’s claim for online substantiation, the Opposition Division accessed the Spanish official database through TMVIEW. However, the information retrieved, does not meet the requirements set in Article 25(1) EUTMIR.

In this context the Opposition Division notes that the official database does not contain all the relevant data in the language of proceedings, in the present case, the colours of the figurative trademark in English.

Article 25(1) EUTMIR requires that the translation reproduces the structure and contents of the original document. In case of translations of online evidence of substantiation, the submission of the translation without the original will be accepted, as long as the document to which it refers is identified correctly.

According to Article 7(4) EUTMDR, translations submitted after the expiry of the relevant time limits will not be taken into account. Furthermore, according to Article 7(5) EUTMDR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted in or that have not been translated into the language of the proceedings, within the time limit set by the Office.

It follows that the evidence filed by the opponent cannot be taken into account.

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 opponent did not submit the necessary translations.

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

Begoña URIARTE VALIENTE

Hanne Kirsten THOMSEN

Dzintra BRAMBATE

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.