OPPOSITION No B 2 517 251
SC Murfatlar Romania SA, str. Murfatlar nr. 1, Murfatlar, Constanta, Romania (opponent), represented by Anișoara Fuciu, Cabinet Ani Fuciu SRL, Snagov, Bl. P53, Sc.A, Parter, Ap. 1, Ilfov, Romania (professional representative)
a g a i n s t
Manuel Manzaneque Suárez, Av. Jose Prat, 14. Esc. 3 - 1º D 1, 02008 Albacete, Spain, and Bodegas y Viñedos Illana, S.L., Finca Buenavista, 16708 Pozoamargo (Cuenca), Spain (applicants), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010 Madrid, Spain (professional representative).
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against some of the goods and services
of European Union trade mark application No
, namely against all the goods in Class 33. The opposition is based on Romanian trade mark registration No 91 814 for the word mark ‘FATUM’. The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR, 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 applicants requested that the opponent submit proof of use of the trade mark on which the opposition is based.
The request was filed in due time and it is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.
On 30/11/2015, the opponent was given until 12/02/2016 to file the requested proof of use.
On 12/02/2016, the opponent submitted, by fax, two pages of observations containing the list of evidence of use of the earlier trade mark, with references to the numbers of pages. However, the evidence was not attached.
A document’s date of notification or communication is the date on which that document is received by the Office (30/01/2014, C‑324/13 P, Patrizia Rocha, EU:C:2014:60, § 43).
Therefore, even though, as explained by the opponent in a further letter, the documents including the requested proof of use were sent by mail on 12/02/2016, they were not received by the Office until 22/02/2016, whereas the time limit for submitting proof of use expired on 12/02/2016.
It follows from the wording of Rule 22(2) EUTMIR that the time limit laid down is a strict one, which means that the Office cannot take into account evidence submitted for the first time after the expiry of the time limit (18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 28).
Therefore, it is considered that the opponent did not submit proof of use or show that there were proper reasons for non-use within the time limit set by the Office.
The opponent invoked Rule 79(a) EUTMIR and Rule 80 EUTMIR. On 26/07/2016, the opponent was given until 26/08/2016 to submit a successful transmission report or evidence of fax error. The opponent did not reply to this invitation. Consequently, there are no reasons for the Office to consider that the communication submitted by the opponent by fax on 12/02/2016 was incomplete or that there are reasonable doubts regarding the accuracy of the transmission.
According to Rule 22(2) EUTMIR, 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) EUTMR and Rule 22(2) EUTMIR.
According to Article 85(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 Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, 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 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 Opposition 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.