OPPOSITION No B 2 549 544
Italservices S.p.A., Via G. Marconi, 37/39, 35010 San Pietro in Gu (PD), Italy (opponent), represented by Accomply, Via Soperga, 2, 20127 Milan, Italy (professional representative)
a g a i n s t
Anke Wilken, Lutherstraße 42, 69120 Heidelberg, Germany (applicant).
On 21/06/2018, the Opposition Division takes the following
2. The opponent bears the costs.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.
opponent filed an opposition against the European Union trade mark
International trade mark registration No 796 767 designating Austria, the Benelux, Bulgaria, Croatia, Cyprus, the Czech Republic, Denmark, Estonia, France, Germany, Greece, Hungary, Ireland, Latvia, Lithuania, Malta, Poland, Portugal, Romania, Slovenia, Slovakia, Spain, Sweden and the United Kingdom for the figurative mark for goods in Class 25;
Italian trade mark registration No 1 439 458 for the figurative mark for goods in Class 25;
European Union trade mark registration No 9 620 196 for the figurative mark for goods in Class 25.
The opponent invoked Articles 8(1)(b) and 8(5) EUTMR.
According to Article 76(1) EUTMR (in the version in force at the time of commencement of the adversarial part, now 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 Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), 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 Rule 19(2) EUTMIR (in the version in force at the time of commencement of the adversarial part), 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 evidence filed by the opponent along with the opposition notice comprises the following: Certificate of renewal dated 13/12/2012 issued by WIPO for international trade mark registration No 796 767; a document referred to in the opponent’s submissions as ‘Italian origin registration certificate No 14582D/2002’ (including a document in relation to the filing of an international registration in the name of Brand New S.r.l. for the trade mark ‘CYCLE’ in Class 25 and further documents in Italian, without a translation into the language of the proceedings); Italian registration certificate for Italian trade mark registration No 1 439 458 (without a translation into the language of the proceedings) and a printout from the eSearch database with regard to the earlier EUTM.
On 14/07/2015, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. After an extension upon the opponent’s request, this time limit expired on 26/01/2016.
On 26/01/2016 (within the substantiation time limit), the opponent submitted, attached to its observations (along with evidence with regard to the use and the alleged reputation of the earlier marks, consisting of distribution agreements between the opponent and third parties and copies of advertisements and invoices), the first and the last page of a Trademarks License Agreement dated 30/12/2005.
Moreover, on 28/01/2016 (i.e. after the substantiation time limit), the opponent submitted on a CD, along with numerous pieces of evidence related to the use and the alleged reputation of the earlier marks (such as invoices, distribution or agency agreements between the opponent and third parties, advertisements and press clips), a licence agreement (the complete Trademarks License Agreement dated 30/12/2005) with Attachment 1 thereto.
At this point, the Opposition Division finds it appropriate to note that some of the evidence (in particular, the documents in Italian referred to by the opponent as Italian origin registration certificate No 14582D/2002 and Italian registration certificate for Italian trade mark registration No 1 439 458) was neither in the language of the proceedings nor accompanied by a translation, as required by Rule 19(3) EUTMIR (in the version in force at the time of commencement of the adversarial part).
The opponent did not submit the necessary translations.
According to Rule 19(4) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.
It follows that these pieces of evidence filed by the opponent on 28/01/2016 as well as those filed within the substantiation time limit but without a translation into the language of the proceedings cannot be taken into account.
In any event, the evidence submitted by the opponent is not sufficient to substantiate the opponent’s entitlement to file the opposition because of the following reasons:
The present opposition is based on an international registration designating various EU Member States, an Italian trade mark registration and an EUTM and the opposition was filed by ‘Italservices S.p.A.’.
However, the proprietor of the earlier trade marks is License & License Business (B.V.), as becomes clear from the evidence filed by the opponent as well as from the data contained in the Office’s database with regard to the earlier EUTM.
The opponent states that it is the exclusive licensee of the proprietor, however, the Opposition Division cannot find an indication that a licence has been registered with regard to any of the earlier marks (‘Italservices S.p.A.’ is not mentioned on any of the registration or renewal certificates submitted by the opponent, including on the documents that are not to be taken into account).
According to Article 25 EUTMR and Articles 26 and 29 EUTMR, the Office registers and publishes licence agreements in respect of European Union trade marks. If the earlier mark basis of the opposition subject to the licence agreement is an EUTM, the opponent does not have to submit any evidence of the licence contract as long as the licence has been registered and published at the Office according to Article 25 EUTMR. In the case at hand, no license has been registered and published at the Office in respect of the earlier EUTM either.
It is true that the opponent is not required to present proof of a registered licence and there are no restrictions on what evidence can be submitted to support the opponent’s entitlement to file an opposition. In all cases, it is up to the opponent to demonstrate that it is a licensee and also that it is authorised by the trade mark owner to file an opposition. For example, any express authorisation on behalf of the trade mark proprietor, such as a licence contract, is deemed sufficient, as long as it contains indications concerning the authorisation or entitlement to file the opposition.
However, the Opposition Division finds that the submitted Trademarks License Agreement with the proprietor of the trade marks and the Annex thereto also do not prove that the opponent is entitled or authorised to act in defence of the earlier trade marks.
The Trademarks License Agreement filed by the opponent grants to the latter the exclusive right to use ‘the Trademark’ for the conception, promotion and marketing of the products in the Territory (comprising all countries of the world). The ‘Trademark’ is defined as ‘the Trademark’ and ‘any other logo, distinctive sign, symbol, label and emblem under the name of “CYCLE” … registered as specified in the Annex 1’. The Opposition Division notes, however, that Attachment 1 to the Agreement entitled ‘The Trademark “CYCLE”’ is left blank and contains no list or specification of trade marks, signs, logos, etc.
Furthermore, according to Article 3.01 of the agreement, it shall be valid and effective for 10 years ‘as from 1 January 2006’ and according to Article 3.02 of the Agreement the parties mutually exclude that the renewal of the agreement is automatic. Consequently, the term of the agreement has expired on 01/01/2016, that is, before expiration of the substantiation time limit (the latter time limit expired on 26/01/2016). The opponent has not submitted any evidence as to the prolongation of the Trademarks License Agreement.
Based on the above, the Opposition Division considers that in the absence of evidence that the Trademark License Agreement presented by the opponent is still in force and since in the said Agreement the trade marks that are its subject matter are not clearly specified, the opponent has failed to prove that it is entitled and authorised to file the opposition.
According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), 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.
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 (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.
The Opposition Division
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.