OPPOSITION Nо B 3 076 038

 

Best Golf Transfer, Rua João de Deus, 25, 8900-314 Vila Real de Santo António, Portugal (opponent). 

a g a i n s t

 

Viajes Rusadir, S.L., Polígono Industrial Avenida Los Perales, S/n, 29649 Mijas-Costa, Málaga, Spain (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 25/06/2020, the Opposition Division takes the following

 

 

DECISION:

1.	Opposition No B 3 076 038 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 18 012 117  (figurative mark),  in Class 39. The opposition is based on national trademark registration (Portugal) No 597 280 (figurative mark), . The opponent invoked Article 8(1)(a) 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 concerning the registration of the trade mark is accessible online from a source recognised by the Office, namely TMview, and the opposing party has provided such evidence by making reference to that source in the notice of opposition.

 

However, the evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark, because it does not contain all the necessary elements in the language of the proceedings, namely the indication of the services on which the opposition is based. The TMView extract from INPI (Portuguese Office) shows all details of the earlier mark in English except the goods and services of the earlier mark:

The opponent has not provided any translation of the services in any other document submitted in the present proceedings.

 

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

 

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

 

 

Chantal VAN RIEL

Inés GARCIA LLEDO

Marzena MACIAK

 

 

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.