OPPOSITION No B 2 512 120

Henweit (Hongkong) Information Technology Co., Ltd, Flat 1801a, 18/f on Hong Commercial Bldg, 145 Hennessy Road, Wanchai, Hong Kong Special Administrative Region of the People’s Republic of China (opponent), represented by Trade Mark Direct, 4 Grove Park Studios, 188-192 Sutton Court Road, Chiswick, London W4 3HR, United Kingdom (professional representative)

a g a i n s t

Shenzhen Lingpin Industrial Limited, No. 12 2/F Building Y1 Bantian Creative Industry Park, Yayuan Road, Bantian Street, Shenzhen, People’s Republic of China (applicant), represented by A.BRE.MAR. S.R.L., Via Servais 27 10146 Torino, Italy (professional representative).

On 30/10/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 512 120 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 13 637 517 for the word mark ‘TOPMAX’, in Classes 9, 11 and 12. The opposition is based on United Kingdom trade mark registrations No 3 057 214 for the figurative mark and No 3 038 908 for the figurative mark . The opponent invoked Article 8(1)(a) and (b) CTMR.

SUBSTANTIATION

According to Article 76(1) CTMR, 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 opponent does not submit appropriate evidence.

According to Rule 19(1) CTMIR, the Office shall give the opposing party the opportunity to present 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) CTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a Community trade mark, the opposing party must provide 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 paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered - Rule 19(2)(a)(ii) CTMIR.

In the present case the Opposition Notice was not accompanied by any evidence. On 01/06/2015, the opponent was given a two-month period from the expiry of the ‘cooling-off’ period to substantiate the earlier rights on which the opposition is based. This period expired on 06/10/2015.

The evidence filed by the opponent on 09/09/2015 comprises a vast amount of materials, including decisions taken by the Office on previous cases, a written statement, screenshots of websites, etc. It does not, however, include any registration certificate or other equivalent official document issued by the relevant public authority that would prove the existence of the earlier marks, their scope of protection and validity and the opponent’s entitlement to file the opposition.

The evidence mentioned above and referred to by the opponent in a letter sent to the Office on 16/10/2015 is not sufficient to substantiate the opponent’s earlier trade marks because it consists of documents that do not relate to these trade marks, such as the Office decisions, or of documents which are of an unofficial nature, such as the written statement or the screenshots from various websites. Therefore, they do not constitute proof of registration of the earlier trade mark rights.

According to Rule 20(1) CTMIR, if until expiry of the period referred to in Rule 19(1) CTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded.

COSTS

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

Ewelina SLIWINSKA

Alexandra Iva DZHAMBAZOVA

Gueorgui IVANOV

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.