OPPOSITION No B 3 048 279

CTT - Correios de Portugal, S.A., Avenida Dom João II, nº 13, 1999-001 Lisboa, Portugal (opponent), represented by RCF - Protecting Innovation, S.A., Rua do Patrocínio 94, 1399-019 Lisboa, Portugal (professional representative)

a g a i n s t

Autowey 168 S.L., Av. Mas de l'Oli 170, 46940 Manises (Valencia), Spain (applicant), represented by Pons Patentes y Marcas Internacional S.L., Glorieta de Rubén Darío 4, 28010 Madrid, Spain (professional representative).

On 24/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 279 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 528 209 for the figurative mark , namely against all the services in Class 39. The opposition is based on Portuguese trade mark registration No 285 228 for the figurative mark , Portuguese trade mark registration No 320 567 for the figurative mark and Portuguese trade mark registration No 354 664 for the word mark 'EMS EXPRESS'. The opponent invoked Article 8(1)(b) EUTMR.

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 all the trade marks on which the opposition is based.

The request was filed in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

On 25/10/2018, the opponent was given two months to file the requested proof of use. This time limit expired, after extension, on 28/02/2019.

The opponent did not submit any evidence concerning the use of the earlier trade marks 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 be rejected pursuant to Article 47(2) and (3) 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

Erkki MÜNTER

Maria José LÓPEZ BASSETS

Alina FRUNZĂ

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.