OPPOSITION No B 2 933 441

Valhall LLC, Hafstad Medland Manor Cheriton Bishop, EX6 6HE, Exeter, United Kingdom (opponent), represented by Plasseraud IP, Immeuble le Rhône Alpes, 235 Bis cours Lafayette, 69006, Lyon, France (professional representative)

a g a i n s t

Anundsjö Byggnads AB, Prästbordet 115, 895 30 Bredbyn, Sweden (applicant), represented by Finn Torell, Sandsmovägen 15, 881 91 Sollefteå, Sweden (professional representative).

On 26/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 933 441 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 (Class 19) of European Union trade mark application No 16 638 215 (word mark ‘MODULUS’). The opposition is based on European Union trade mark registration No 16 347 536, French trade mark registration No 1 469 562 and international trade mark registration No 529 417 designating Portugal, Austria, Italy and the Benelux (all three for the word mark ‘MODULO’). The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION

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 evidence submitted by the opponent comprises the following:

• Extract of the database of the French IP Office (INPO) regarding French trade mark registration No 1 469 562.

• ROMARIN extract regarding international trade mark registration No 529 417.

• Renewal certificate issued by INPI regarding French trade mark registration No 1 469 562.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade marks, since it does not prove the opponent’s entitlement to file an opposition.

In particular, the opposition was filed by the British company ‘Valhall LLC’, seated in Exeter (United Kingdom), which appears in the Office’s register under ID 692741. However, according to the Office’s register the owner of the earlier European Union trade mark registration No 16 347 536 is the US company ‘Valhall LLC’, seated in Wilmington Delaware (USA), which appears under ID 720640.

Likewise, the latter one also appears as owner of the earlier international trade mark registration No 529 417 in the ROMARIN extract.

Finally, as regards the earlier French mark, the database extract only refers to ‘Valhall LLC’ without any address and, thus, no direct reference to neither the UK nor the USA. However, in the renewal certificate of this trade mark the US company is indicated as owner.

The UK company ‘Valhall LLC’ with EUIPO ID 692741 (the opponent) and the US company ‘Valhall LLC’ with EUIPO ID 720640 (the owner of all three earlier marks) cannot be considered as the same legal person.

The opponent has not submitted any further documents which could serve as proof of its entitlement to file the opposition, e.g. as an authorised licensee, or at least clarify the discrepancy in the registers, e.g. whether the opponent is a representation and not a different company. As stated above, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties.

According to Article 8(1) and (7) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, 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.

In the absence of any further evidence, the opposition must therefore be rejected as unfounded.

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

Lars HELBERT

Konstantinos MITROU

Tobias KLEE

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.