OPPOSITION Nо B 3 133 552

Terranea 2000 Correduria de seguros, SL, Ctra. de la Coruña, Km 23, 200 (Ed. Las Rozas), 28230 Las Rozas, Spain (opponent), represented by Jose Luis Donoso Romero, Avenida Isabel de Farnesio 30 A, 28660 Boadilla del Monte (Madrid), Spain (professional representative)

a g a i n s t

La Cesenate Conserve Alimentari S.p.A., Via Cervese 364, 47521 Cesena, Italy (applicant), represented by Società Italiana Brevetti S.p.A., Stradone San Fermo 21/b, 37121 Verona, Italy (professional representative).

On 20/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 133 552 is rejected as inadmissible.

2. The opposition fee will not be refunded.

REASONS

On 29/10/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 296 900 ‘TERRANEA’ (word mark), namely against all the goods in Classes 5, 29, 30 and 32. The opposition is based on Spanish trade mark registration No 2 843 853 (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

ADMISSIBILITY

According to Article 2(g) EUTMDR, the notice of opposition must indicate the goods and services on which each of the grounds for the opposition is based.

In the present case, the services in Class 36 on which the opposition is based have been indicated in a language (Spanish) other than the language of the opposition proceedings. According to Article 146(5) and (7) EUTMR, this information has to be submitted in the language of the opposition proceedings, namely, English.

According to Article 5(4) EUTMDR, where the opponent submits an incomplete translation, the part of the notice of opposition that has not been translated will not be taken into account in the examination of admissibility.

Since the services on which the opposition is based cannot be taken into account, the indication of goods and services on which the ground for the opposition is based as required by Article 2(g) EUTMDR is missing.

According to Article 5(5) EUTMDR, if the notice of opposition does not comply with the provisions of Article 2(2)(d) to (h) EUTMDR, the Office will inform the opponent accordingly and invite it to remedy the deficiencies noted within a period of two months. If the deficiencies are not remedied before this time limit expires, the Office will reject the opposition as inadmissible.

The Office informed the opponent of the deficiency in its notification dated 16/12/2020. The opponent was set a time limit of two months, until 16/02/2021, to remedy the deficiency, namely to submit a translation of the list of services of the earlier mark on which the opposition is based, in the language of the opposition proceedings. In the same letter, the Office informed the opponent that if the deficiency was not remedied within the time limit, the opposition would be rejected as inadmissible.

The opponent did not submit the necessary translation within the abovementioned time limit.

In its notification of 24/02/2021, the Office informed the opponent that, having failed to remedy the deficiency identified in the Office’s communication of 16/12/2020 within the given time limit – that is, on or before 16/02/2021 – the opposition would be rejected as inadmissible pursuant to Article 5(5) EUTMDR.

On 24/02/2021, the opponent submitted the notice of opposition with an English translation of the list of services on which the opposition was based. On the same day, in a separate letter, the opponent submitted a copy of a communication, dated 24/12/2020, which it had allegedly sent to the Office. In this, it provided the English translation of the list of services in reply to the deficiency raised by the Office in its communication of 16/12/2020.

On 02/03/2021, the Office asked the opponent to provide the Office’s receipt of its letter of 24/12/2020.

The opponent did not reply to the abovementioned Office’s communication and did not provide the Office’s receipt of its letter of 24/12/2020.

On 23/03/2021, the Office informed the opponent that following an investigation carried out by the Office’s IT Services, its communication of 24/12/2020 in reply to the deficiency raised in the Office’s letter of 16/12/2020 had not been found. Consequently, it was not deemed to have been received by the Office.

For the sake of completeness, the Opposition Division notes that, although the opponent relied on online substantiation, the information regarding the list of goods and services in the Spanish national database is only available in Spanish.

The opposition must, therefore, be rejected as inadmissible.

Please note that the opposition fee will not be refunded. In accordance with Article 6(5) EUTMDR, the Office only refunds the opposition fee in the event of a withdrawal and/or restriction of the trade mark during the cooling-off period.

The Opposition Division

Catherine MEDINA

Agnieszka PRZYGODA

Solveiga BIEZA

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.