OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 463 191
El Gato Negro SL, Plazo Mayor Nº 30, 28012 Madrid, Spain (opponent), represented by Alesci Naranjo Propeidad Industial SL, Calle Paseo de la Habana 200, 28036 Madrid, Spain (professional representative)
a g a i n s t
Balsan (Société par Actions Simplifiée), Domaine de Corbilly, 36330 Arthon, France (applicant), represented by Ipsilon Brema – Loyer, Le Centralis, 63 Avenue du Général Leclerc, 92340 Bourg la Reine, France (professional representative).
On 21/01/2016, the Opposition Division takes the following
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against all the goods
Community trade mark application No
No 171 071 registered for goods in Class 23.
No 1 266 526 registered for services in Class 39.
No 1 666 582 registered for goods in Class 25.
The opponent invoked Article 8(1)(b) CTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) CTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.
According to the same provision, in the absence of such proof the opposition must be rejected.
The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, Spanish trade marks No 171 071, 1 266 526 and 1 666 582.
The request was filed in due time and it is admissible given that the earlier trade marks were registered more than five years prior to the publication of the contested application.
On 08/10/2015 the opponent was given two months to file the requested proof of use. This time limit expired on 13/12/2015.
The opponent did not furnish any evidence concerning the use of the earlier trade marks on which the opposition is based. It did not argue that there were proper reasons for non-use either.
According to Rule 22(2) CTMIR, if the opposing party does not provide such proof before the time limit expires, the Office shall reject the opposition.
Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) CTMR and Rule 22(2) CTMIR.
According to Article 85(1) CTMR, 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 Rule 94(3) and (7)(d)(ii) CTMIR, 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
According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, 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 (Article 2(30) CTMFR) has been paid.