OPPOSITION No B 2 590 563

Orkla Foods Romania S.A., Str. Copilului, Nr. 14-18, Etaj 2, Sector 1, Bucuresti, Romania (opponent)

a g a i n s t

Lesaffre et Compagnie, 41 rue Etienne Marcel, 75001 Paris, France (applicant), represented by Cabinet Lavoix, 62 rue de Bonnel, 69448 Lyon Cédex 03, France (professional representative).

On 23/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 590 563 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 in Class 30 of European Union trade mark application No 14 295 422 for the figurative mark . The opposition is based on Romanian trade mark registrations No 043 447A for the figurative mark , No 043 447B for the figurative mark , No 122 364 for the figurative mark , No 135 554 for the figurative mark and International registration No 1 139 894 . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

SUBSTANTIATION

According to 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 Article 7(1) EUTMDR, 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 Article 7(2) EUTMDR, 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 particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit 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 Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered -Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source- Article 7(3) EUTMDR.

According to Article 7(4) EUTMDR, any filing, registration or renewal certificates or equivalent documents referred to in Article 7(2)(a), (d) or (e) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party of its own motion within the time limit specified for submitting the original document.

Such translations must be submitted by the opponent on its own motion and within the time limit for substantiation of the opposition. Only what is submitted and translated within this time limit is taken into account.

I. Romanian trade mark registrations No 043 447A, No 043 447B, No 122 364 and No 135 554.

In the present case, the evidence filed by the opponent together with the opposition notice, consists of the registration certificates in Romanian language.

The evidence mentioned above is not sufficient to substantiate the above mentioned opponent’s earlier trade marks, because there is no translation to the language of proceedings, namely English, of the certificates filed for the above mentioned Romanian registrations.

On 26/03/2018 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. This time limit expired on 05/08/2018.

The opponent did not submit the necessary translations.

According to Article 8(1) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, 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, as far as it is based on these earlier marks.

II. International registration No 1 139 894.

Concerning this earlier right, a registration certificate in language of proceedings, namely English, was attached to the notice of opposition.

However, the Office notes that this mark enjoys the protection through a designation under the Madrid Protocol only outside the European Union, namely in Moldova.

Consequently, this earlier right cannot be taken into account as a base of opposition.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

COSTS

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.

The Opposition Division

Begoña URIARTE VALIENTE

Reet ESCRIBANO

Alina FRUNZA

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.