OPPOSITION No B 2 675 661

Finest Fizz Limited, 190 Brooklands Road, Weybridge Surrey KT13 0RJ, United Kingdom (opponent), represented by Lewis Silkin LLP, 5 Chancery Lane, Clifford's Inn, London EC4A 1BL, United Kingdom (professional representative)

a g a i n s t

Thomson & Scott Limited, Rosemary Cottage, The Drove, Twyford, Winchester, Hampshire SO21 1QL, United Kingdom (applicant), represented by Forresters, Sherborne House, 119-121 Cannon Street, London EC4N 5AT, United Kingdom (professional representative).

On 27/01/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 675 661 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 and services of European Union trade mark application No 14 835 714 , namely against all the goods and services in Classes 21, 33 and 35. The opposition is based on United Kingdom trade mark application No 3 092 681 ´SKINNY FIZZ´, in regard to which the opponent invoked Article 8(1)(b) and 8(5) EUTMR, and non-registered trade mark ´SKINNY FIZZ´ for the territories of Estonia, Netherlands, Czech Republic, Denmark, United Kingdom, Hungary, Poland, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland, in regard to which the opponent invoked Article 8(4) EUTMR.

SUBSTANTIATION- United Kingdom trade mark application No 3 092 681

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 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 trade mark which is not yet registered, the opposing party must provide a copy of the relevant filing certificate or an equivalent document emanating from the administration with which the trade mark application was filed (except in the case of a European Union trade mark application) — Rule 19(2)(a)(i) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier UK trade mark application on which the opposition is based.

On 17/05/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 29/09/2016.

As far as the earlier UK trade mark application is concerned, the opponent submitted the required evidence, namely an extract from the database of the United Kingdom Intellectual Property Office, on 07/11/2016, that is, only after the expiry of the abovementioned time limit.

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.

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 its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition shall be rejected as unfounded.

On 07/11/2016, the opponent further submitted a request for continuation of proceedings in respect to the time limit for submission of further facts and evidence in support of the opposition, which time limit expired on 29/09/2016.

Following from Article 82(2) in conjunction with Article 41(4) EUTMR, the continuation of proceedings is not applicable and could not be exercised for the period fixed by the Office for submission of facts, evidence and arguments in support of the opposition (the substantiation period). Therefore, with the letter of the Office, dated 25/11/2016 and pursuant to Article 82 EUTMR, the Office refused the request of the opponent for continuation of the proceedings as regard to the period laid down in Article 41(4) EUTMR.

It follows that the opposition must be rejected as unfounded, as far as it is based on this earlier mark.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The opponent invoked Article 8(4) in regard to a non-registered trade mark ´SKINNY FIZZ´ for the territories of Estonia, Netherlands, Czech Republic, Denmark, United Kingdom, Hungary, Poland, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

As specified above, 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.

As specified above, according to Rule 19(1) and (2) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition, and also to file proof 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.

The notice of opposition was not accompanied by any evidence of use of the earlier non-registered trade mark in the course of trade. The time limit, given by the Office for submission of the abovementioned material expired on 29/09/2016. The opponent did not submit any evidence of use in the course of trade of the earlier non-registered trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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

Fabian GARCIA QUINTO

Eamonn KELLY

Vanessa PAGE

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.