OPPOSITION Nо B 3 126 474

 

Banco Comercial Português, S.A., Praça D. João I, 28, 4000-295 Porto, Portugal (opponent), represented by Gastão Da Cunha Ferreira, Lda., Rua dos Bacalhoeiros, nº 4, 1100-070 Lisboa, Portugal (professional representative) 

 

a g a i n s t

 

Shenzhen Hande Hall Technology Co., Ltd., Room 401, Building 1, Baode Technology Factory, No 3 Guanyi Road, Luhu Community, Guanhu Street, Longhua District, Shenzhen, China (applicant), represented by Intermark Patentes y Marcas, S.L.P. (Also Trading As Lidermark Patentes y Marcas), C/Obispo Frutos, 1B 2°A, 30003 Murcia, Spain (professional representative).

On 29/06/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 126 474 is rejected in its entirety.

 

2.	The opponent bears the costs, fixed at EUR 300.

 

REASONS

 

On 22/07/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 225 919 (figurative mark), namely against some of the goods in Class 9 and all of the services in Class 35. The opposition is based on Portuguese trade mark registration No 495 498, (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.

 

In the present case, the opponent indicated that it accepts that the necessary information for the earlier 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 notice of opposition was not accompanied by any evidence as regards the earlier trade mark on which the opposition is based.

On 08/09/2020 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 18/01/2021.

The opponent did not submit any evidence concerning the substantiation of the earlier trade mark.

A close examination of the contents of the online official database of the Portuguese national trade mark office (INPI) in relation to the earlier mark shows that the name of the owner of such the earlier mark is the entity ‘Banco ActivoBank S.A.’ whereas the notice of opposition states that the opponent of the present opposition is ‘Banco Comercial Português, S.A.’

According to Article 2(2)(h)(i) and (iii) EUTMIR, ‘the notice of opposition shall contain:…(i) the identification of the opposing party in accordance with Article 2(1)(b) of Implementing Regulation (EU) 2018/626 ( 1 );… (iii) where the opposition is entered by a licensee or by a person who is entitled under the relevant Union legislation or national law to exercise an earlier right, a statement to that effect and indications concerning the authorisation or the entitlement to file the opposition.’ If the notice of opposition is based on the grounds of Article 8(1) or (5) EUTMR and thus on trade mark registrations or applications, the notice of opposition may be filed by the owner and by the licensees of these registrations or applications, provided they are authorised by the owner.

In the present case, the notice of opposition was filed by ‘Banco Comercial Português, S.A.’ However, the online official database shows the entity ‘Banco ActivoBank S.A.’ as the owner of the earlier mark and neither did the opponent provide evidence of the transfer of the earlier mark nor did it show that both companies are the same legal entity, which has merely changed its name. Moreover, the opponent did not provide any document that proves that the opponent is a licensee of the trade mark proprietor. Any such information is not contained in the online official database either.

Therefore, the evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark, because there is a clear discrepancy between the owner of the earlier mark and the opponent filing the notice of opposition.

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

Claudia SCHLIE

Reet ESCRIBANO

 

 

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.