OPPOSITION No B 2 681 404

IGT Germany Gaming GmbH, Ravensberger Straße 41, 32312 Lübbecke, Germany

(opponent), represented by Armin Herlitz, IGT Austria GmbH, Seering 13-14, 8141 Premstätten, Austria (employee representative)

a g a i n s t

Master Mining Company LLC, Corporation Trust Center - 1209 Orange Street, Wilmington Delaware 19801, United States of America (applicant), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative).

On 05/09/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 681 40404 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 14 784 60707 namely against all of the services in Class 41 and some of the services in Class 42. The opposition is based on Austrian trade mark registration No 277 648. The opponent invoked Article 8(1)(b) EUTMR.

SPHINX	SPYJINX
Earlier trade mark	Contested sign

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.

According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 shall be in the language of the proceedings or accompanied by a translation. The translation shall be submitted within the time limit specified for submitting the original document.

According to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

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.

On 14/04/2016 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 19/08/2016.

In the present case the notice of opposition was filed in the name of ‘IGT Germany Gaming GmbH’. On 19/08/2016 the opponent submitted together with its arguments: i) a registration certificate pertaining to the earlier Austrian trade mark registration No 277 648 in the name of ‘Spielo International Germany GmbH’ and a translation thereof into English, ii) a certified translation in English of the trade register excerpt of ‘IGT Germany Gaming GmbH’ and iii) a commercial register excerpt of ‘IGT Austria GmbH’ in German.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark, because the registration certificate is in the name of ‘Spielo International Germany GmbH’ rather than in the name of the opponent ‘IGT Germany Gaming GmbH’. Thus, there is no evidence to show that the opponent is entitled to file an opposition based on the earlier right. Although the opponent has submitted a certified translation of the trade register excerpt relating to ‘IGT Germany Gaming GmbH’ which shows ‘Spielo International Germany GmbH’ as a former name of the opponent, this is not an original document and cannot be taken into account on its own according to Rule 19(4) EUTMIR. The excerpt from the Austrian commercial register relates to the company ‘IGT Austria, GmbH’ which, although it pertains to the Austrian branch of the opponent’s company, cannot serve to prove a change of name of the opponent from ‘Spielo International Germany GmbH’ to ‘IGT Germany Gaming GmbH’. Moreover a translation of this document into the language of the proceedings has not been provided in accordance with Rule 19(3) EUTMIR.

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

Julia TESCH

Julia TESCH

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.