OPPOSITION No B 2 849 050

Quortus Limited, Building A, Riverside Way Watchmoor Park, Camberley Surrey GU15 3YL, (opponent), represented by Withers & Rogers LLP, 4 More London Riverside, London SE1 2AU, United Kingdom (professional representative)

a g a i n s t

Softcorner, 11 rue de Provence, 75020 Paris, France (applicant), represented by Thibault Bruniau Softcorner, 11 rue de Provence, 75009 Paris, France (employee representative).

On 28/07/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 849 050 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 996 119, namely against all services in Class 42. The opposition is based on international trade mark registration No 1 157 226 designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

QUORTUS
Earlier trade mark	Contested sign

SUBSTANTIATION

According to Article 76(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 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 will 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 must 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 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 20/02/2017 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. The time limit set by the Office expired on 25/06/2017.

On 14/07/2017, along with the notice of opposition, the opponent submitted an extract from the EUIPO eSearch database for the international registration with EU designation on which the opposition was based.

The evidence in question is not sufficient to substantiate the opponent’s earlier international trade mark, because extracts from the Office’s databases (i.e. eSearch) are not accepted as valid pieces of evidence for this kind of earlier mark. The previous practice of the Office was to accept such documents; however, this practice is no longer in force for oppositions with a filing date established after 01/07/2012 (see Opposition Guidelines, part C, Procedural Matters, Point 4.2.3.1, page 36, footnote 1, https://euipo.europa.eu). Therefore, as the present opposition was filed on 14/07/2017, that is, after 01/07/2012, the evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark.

The Opposition Division also notes that international registrations are processed by WIPO and this is the administration by which these trade marks are registered. Therefore, it is the sole body responsible for keeping official records of any international registration regardless of designation, either the European Union or any country.

Therefore, a certificate of registration or any other equivalent evidence emanating from WIPO such as a ‘ROMARIN’ extract is needed for the substantiation of IR’s designating the EU. In addition, the Opposition Division also accepts a database extract from ‘TMview’ for the same purposes, as long as it contains all the necessary information, and as long as this evidence is provided by the opponent (see Guidelines for Examination in the Office, Opposition, Part C, Procedural Matters, p. 36). Rule 19(2)(a) EUTMIR only specifically allows an exception to the rule to apply to EUTMs, this exception is not deemed to extend to any other trade marks, including IR’s designating the EU.

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 will 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

Lars HELBERT

Janja FELC

Francesca CANGERI SERRANO

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.