OPPOSITION No B 2 921 974

Interplast Co. Ltd., PO Box 4679, Sharjah, United Arab Emirates (opponent), represented by Wynne-Jones, Laine & James LLP, Essex Place 22, Rodney Road, GL50 1JJ Cheltenham, United Kingdom (professional representative)

a g a i n s t

Cromwell Group (Holdings) Ltd, 65 Chartwell Drive, Wigston, LE18 2FS Leicester, United Kingdom (applicant), represented by Brabners LLP, Horton House, Exchange Flags, L2 3YL Liverpool, United Kingdom (professional representative).

On 22/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 921 974 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 007 213 , namely against all the goods in Classes 8, 9, 11 and 20. The opposition is based on European Union trade mark registration No 2 374 684 EDISON (word mark) and national UK trade mark registration No 11 927 381 EDISON (word mark). The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION

In the present case, the opponent asked the Office on 07/08/2017, that is to say after the three months opposition period had expired, to correct an obvious mistake made in the notice of opposition namely it incorrectly identified trade mark No 11 927 381 as being a UK trade mark instead of an EU trade mark.

The Opposition Division does not consider the aforementioned to be an obvious mistake. The Office considers ‘obvious error’ in relation to Article 49(2) EUTMR and Article 102(1) EUTMR to be understood as meaning mistakes which obviously require correction, in the sense that nothing else would have been intended than what is offered as the correction. This would be the case, if, for example, the opposition notice was accompanied either by a registration certificate, a database excerpt or by further arguments which would have shown the correct identity of the earlier right. However, this is not the case.

On 30/08/2017 the Office communicated to the opponent that the request for correction cannot be accepted in accordance with Rule 15 and 17 EUTMIR (in the version in force at the time of the filing of the opposition, now Article 2(2)(b(i) EUTMDR and Article 5 EUTMDR respectively) and informed the applicant accordingly.

Furthermore, it must be noted that the opponent cannot extend the basis of its opposition after the three-month opposition period. Since this other earlier mark (EUTM No 11 927 381) was not claimed as a basis of the opposition during the three-month opposition period, and given that the opposing party cannot extend the basis of the opposition once the opposition period has expired, this earlier right cannot be taken into account in the examination of the opposition and the opposition must be rejected as inadmissible, as far as the opponent seeks to invoke EUTM No 11 927 381 as basis of the opposition.

Consequently, the Opposition Division must examine the opposition in relation to UK trade mark registration No 11 927 381, as invoked in the notice of opposition.

According to Article 95(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 submitted 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 Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit 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 Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence 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 that is not a European Union trade mark, the opposing party must submit 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 Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR.

In the present case, the notice of opposition was not accompanied by any evidence as regards the earlier national UK trade mark No 11 927 381 on which the opposition is based.

On 13/07/2017 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. After an extension of the cooling-off period, this time limit expired on 24/02/2018.

The opponent did not submit any evidence concerning the substantiation of the earlier trade mark. Moreover, the opponent did not make reference to evidence accessible online from a source recognised by the Office.

According to Article 8(1) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not submitted any evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, or where the evidence submitted is manifestly irrelevant or manifestly insufficient, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier right.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is inter alia based, namely European Union trade mark No 2 374 684.

On 14/12/2017 the opponent was given two months to file the requested proof of use.

The opponent did not submit any evidence concerning the use of the earlier trade mark on which the opposition is based. It did not argue that there were proper reasons for non-use either.

According to Article 10(2) EUTMDR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition.

Therefore, the opposition must also be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR.

COSTS

According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Denitza STOYANOVA- VALCHANOVA

Sabine HACKSTOCK

Stanislava STOYANOVA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.