OPPOSITION No B 2 598 988

Moresophy GmbH, Fraunhoferstr. 15, 82152 Martinsried, Germany (opponent), represented by Andrae Westendorp Patentanwälte Partnerschaft, Uhlandstr. 2, 80336 München, Germany (professional representative)

a g a i n s t

LG Electronics Inc., 128, Yeoui-daero, Yeongdeungpo-gu, Seoul, 150-721, Republic of Korea (applicant), represented by Regimbeau, 20 rue de Chazelles, 75847 Paris Cédex 17, France (professional representative).

On 20/09/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 598 988 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 European Union trade mark application No 14 449 921. The opposition is based on international trade mark registration designating the European Union No 779 356. The opponent invoked Article 8(1)(a) and (b) EUTMR.

L4	L4
Earlier trade mark	Contested sign

The contested goods are in Classes 9 and 14.

SUBSTANTIATION

According to Article 76(1) EUTMR, 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) EUTMIR, 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) EUTMIR, 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 European Union 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) EUTMIR.

In the present case, the evidence filed by the opponent consists of a registration certificate from WIPO and a renewal certificate from WIPO.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark, because the documents submitted do not contain all the necessary elements, namely the scope of protection of the earlier right; the evidence does not demonstrate that the international registration designates the European Union. The documents submitted by the opponent contain indications that the international registration concerns Germany (basic registration and priority), as well as Austria, Benelux, France, Italy and Switzerland (designations under the Madrid Agreement). There is no indication that would confirm that the mark has protection in the European Union as such, a fact on which the opponent relies in the notice of opposition.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR 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) 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

Vita VORONECKAITĖ

Gailė SAKALAITĖ

Gueorgui IVANOV

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.