OPPOSITION No B 3 093 201

Pagos del Rey, S.L., Autovía de Andalucía, Km. 199, Valdepeñas (Ciudad Real), Spain (opponent), represented by José María Sánchez Wolff, Avda/ Cantabria 48, 3ºa, 28042 Madrid, Spain (professional representative)

a g a i n s t

Josef Maximilian Sporrer, Nr.31, 447149 Halmeu Vii, Romania (applicant), represented by Carmen - Augustina Neacsu, 12/3 Rozelor Street, 430293 Baia Mare, Maramures, Romania (professional representative).

On 22/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 093 201 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 18 026 511 for the figurative mark , namely against all the goods in Class 33. The opposition is based on Spanish trade mark registration No 3 527 265 for the word mark ‘CASTAÑEDA’ and Spanish trade mark registration No 373 788 for the figurative mark . 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.

If the opposition is filed by the opponent who, according to the registration certificate, is not the owner of the earlier mark, the opposition will be rejected as not substantiated, unless the opponent has provided evidence of the transfer and, if already available, the registration of the transfer in the relevant register or the opponent has shown that both are the same legal entity, which has merely changed its name.

In the present case, the opposing party has accepted in the notice of opposition filed electronically on 29/08/2019 that the necessary information for the earlier Spanish trade mark registration No 3 527 265 for the word mark ‘CASTAÑEDA’ and Spanish trade mark registration No 373 788 for the figurative mark , basis of the opposition, is to be 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.

For the abovementioned Spanish earlier rights, basis of the opposition, the opponent submitted, together with the notice of opposition, evidences consisting of extracts from the I.N.P.I. data base in Spanish.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade marks, because according to the opposition notice, the opponent is ‘PAGOS DEL REY, S.L.’ while according to the register extract (including the online extract), the owner of the trade marks is ‘FELIX SOLIS, S.L.’ and the opposition has been entered as filed by owner/co-owner.

Within the substantiation period as defined by Article 7(2) EUTMDR the opponent must prove the existence, validity and scope of protection of the earlier mark or right as well as submit the proof of entitlement to file the opposition.

Within the same time limit, the opponent may submit additional facts, evidence and arguments in support of its opposition.

On 10/10/2019 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 10/02/2020.

The opponent did not submit any evidence within the above-mentioned time limit that would show that there was a transfer of rights between the owner of the earlier marks and the opponent. In other words, the opponent did not prove its entitlement to file the opposition. The Opposition Division notes that the online extract of the earlier marks in question does not make any reference to the above-mentioned evidence regarding the entitlement of the opponent to file the opposition in the present case.

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

Monika CISZEWSKA

Maria José LÓPEZ BASSETS

Trinidad NAVARRO CONTRERAS

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.