OPPOSITION Nо B 3 117 264

 

Homemarket - Comércio e Decoração, LDA, Rua António Silva Marinho, Nº 197, 4100-604 Porto, Portugal (opponent), represented by Abel Dário Pinto de Oliveira, Rua Nossa Senhora de Fátima, n° 419 - 3º Frente, 4050-428 Porto, Portugal (professional representative) 

 

a g a i n s t

 

S&A Georgiou Paphos Homemarket Ltd., Andrea Vlami 75, 8025 Paphos, Cyprus (applicant), represented by Varnavas Playbell & Co. LLC, 106, Gladstonos Str., 3032 Limassol, Cyprus (professional representative).

On 01/03/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 117 264 is rejected in its entirety.
2.	The opponent bears the costs, fixed at EUR 300.

 

REASONS

 

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 201 017 (figurative mark), namely against all the goods in Class 25 and against some of the services in Class 35. The opposition is based on European Union trade mark registration No 4 459 384 (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 the present case, the opponent invoked Article 8(1)(b). According to Article 46 EUTMR together with Articles 2(2)(h)(iii) and 7(2) EUTMDR, only proprietors and authorised licenses are entitled to file opposition for Article 8(1) and Article 8(5) EUTMR.

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.

In the present case, according to the opposition notice, the opponent is the legal entity ‘Geonext - Produtos Eléctricos, S.A.’ and according the observations filed together with the opposition notice, the opponent is the legal entity ‘Homemarket - Comércio e Decoração, LDA’. However, according to the evidence found online, the owner of the earlier trade mark is ‘Homemarket - Comércio e Decoração S.A.’. It follows that the legal entity ‘Homemarket - Comércio e Decoração, LDA’ was not entitled to file the opposition in the present case.

As the Opposition Division points out correctly the notice of opposition states the wrong opponent.

However, applying Article 49(2) EUTMR, which refers to the EUTM application, by analogy, obvious mistakes in the notice of opposition may be corrected. The Office considers ‘obvious error’ in relation to Article 49(2) EUTMR and Article 102(1) EUTMR to be understood as meaning mistakes that obviously require correction, in the sense that nothing else would have been intended than what is offered as the correction. As the observations submitted together with the opposition notice indicate ‘Homemarket - Comércio e Decoração, LDA’ as the opponent, the Office does consider the fact that the wrong opponent has been indicated in the notice of opposition to be an obvious error. However, the Opposition Division still notes the discrepancy in the legal form of the opponent.

In case the earlier mark or application is an EUTM, the opponent does not have to submit any documents as far as the existence and validity of the EUTM (application) is concerned. The examination of the substantiation will be done ex officio with respect to the data contained in the Office’s database. However, in case there are changes since the entry in the database that the Office has not been informed about, the opponent has to submit evidence for this change, to demonstrate its entitlement.

It is clear from the relevant database (EUIPO’s) that the owner of the earlier mark since the filing of the earlier EUTM, during the substantiation period and even after the expiry of the substantiation period, was not the opponent (legal entity ‘Homemarket - Comércio e Decoração, LDA’) but a legal entity ‘Homemarket - Comércio e Decoração S.A.’.

Therefore, the opponent was obliged to send to the Office evidence about this change of legal form in the company’s structure to prove its entitlement to file the opposition.

On 03/07/2020, the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 08/11/2020.

In the present case, the opponent did not submit any evidence within the above mentioned time limit (substantiation period) that would show that the legal entity ‘Homemarket - Comércio e Decoração, LDA’ was entitled to file an opposition in relation to the above mentioned earlier registration (registered on the name of ‘Homemarket - Comércio e Decoração S.A.’) or that the opponent and the trade mark owner are economically related as members of the same group of companies and the opponent was authorised by the trade mark proprietor to file the opposition. In other words, the opponent did not prove its entitlement to file the opposition. Furthermore, the Opposition Division notes that the online extract of the earlier mark 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) 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.

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

 

 

Claudia MARTINI

Reet ESCRIBANO

Maria José LOPEZ BASSETS

 

 

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.