CANCELLATION No 11241 C (INVALIDITY)

Soffass S.p.A., Via Fossanuova 59, 55016 Porcari (Lucca), Italy (applicant), represented by Racheli S.R.L., Viale San Michele del Carso 4, 20144 Milan, Italy (professional representative)

a g a i n s t

TAP dayli Vertriebs GmbH, Hobelweg 4, 4055 Pucking, Austria (EUTM proprietor), represented by Hasch & Partner Anwaltsgesellschaft, Zelinkagasse 10, 1010 Vienna, Austria (professional representative).

On 10/10/2016, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods and services of European Union trade mark No 11 090 404, namely against some of the goods and services in Classes 3, 5, 16 and 35. The application is based on Italian trade mark registration No 1 014 317. The applicant invoked Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the signs are highly similar and the goods are identical or similar.

The EUTM proprietor disputes the arguments of the counterparty.

SUBSTANTIATION OF ITALIAN TRADE MARK No 1 014 317

According to Article 53(1) EUTMR, a European Union trade mark shall be declared invalid on application to the Office when, inter alia, there is an earlier trade mark as referred to in Article 8(2) EUTMR.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the applicant does not submit appropriate evidence.

According to Rule 37(b)(ii) EUTMIR, for an application for cancellation to be admissible it must contain particulars of the right or rights on which the application is based and, if necessary, particulars showing that the applicant is entitled to adduce the earlier right as grounds for invalidity. Pursuant to Rule 37(b)(iv) EUTMIR, an application for cancellation must also contain an indication of the facts, evidence and arguments presented in support of the cancellation grounds.

In the application for cancellation, the applicant indicated some particulars of the earlier right on which the cancellation application is based and attached one filing certificate and one registration certificate, with translations thereof.

These indications and documents were deemed sufficient to fulfil the admissibility requirements. Therefore, on 07/10/2015 the Office notified the parties that the request for invalidity was admissible under Rule 40(1) EUTMIR and informed them that this decision could be appealed together with the final decision on the application, pursuant to Article 58(2) EUTMR. In the letter addressed to the applicant, the Office drew its attention to the fact that ‘the documents and/or translations that you may have submitted so far with a view to completing the admissibility of the application may not be sufficient for the substantiation of the application for invalidity (proof of the existence and validity of the earlier right/s) as a whole. This will be examined when a decision on the substance on the case is taken.’

Although in invalidity proceedings based on relative grounds there is no time limit for the substantiation of the earlier rights, and proof of the existence, validity and scope of protection of all the earlier rights and evidence proving the applicant’s entitlement to them have to be filed together with the application, this does not mean that there is no distinction between admissibility and substantiation requirements. Applying by analogy Rule 19(2)(a)(ii) EUTMIR, if the application for invalidity is based on a registered trade mark which is not a European Union trade mark, the applicant must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate or equivalent documents emanating from the administration by which the trade mark was registered.

In the present case, as explained above, the applicant submitted two certificates. The filing certificate stated the goods for which registration of the earlier trade mark was sought. The registration certificate did not, however, make any mention of the goods for which the trade mark had finally been registered and so the scope of protection of the earlier mark is unknown. In accordance with Rule 19(2)(a)(ii) EUTMIR which is applied by analogy to invalidity proceedings, it therefore follows that, as there is no proof of the goods for which the earlier trade mark is registered, the action must be dismissed as unfounded.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(iv) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Michaela SIMANDLOVA

María Belén IBARRA DE DIEGO

Pedro JURADO MONTEJANO

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.