OPPOSITION No B 2 640 566

Sandy S.A.R.L., 447, rue Victor Fichelle, 59310 Auchy Les Orchies, France (opponent), represented by Cabinet Le Guen Maillet, 5, place Newquay, B.P. 70250, 35802 Dinard Cédex, France (professional representative)

a g a i n s t

Hermanes Paulus Dierkes, C/San Lorenzo, 2 C.C. El Valle, Loc. 6, 03581 El Albir - Alfaz del Pí, Spain (applicant)

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 640 566 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition initially against some of the goods of European Union trade mark application No 14 666 804 , namely against all the goods in Classes 16 and 28. Following limitation of the goods and services filed on 08/03/2016 by the applicant, the opposition is only directed against the goods in Class 16. The opposition is based on French trade mark registration No 3 301 929 . The opponent invoked Article 8(1)(b) EUTMR.

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 translation of the French registration certificate, however without providing the original certificate.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark, as the original certificate or the extract of the database is required. The translation without the original certificate has no value. 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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Richard BIANCHI

Claudia MARTINI

Sigrid DICKMANNS

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.