1001 delights | Decision 2725375
Date Published: Sep 28, 2017
OPPOSITION No B 2 725 375
Podravka prehrambena industrija d.d., Ante Starčevića 32, Koprivnica 48000, Croatia (opponent), represented by Tanja Rajic and Diana Petricevic, Podravka prehrambena industrija d.d., Ante Starčevića 32, Koprivnica 48000, Croatia (employee representatives)
a g a i n s t
Lidl Stiftung & Co. KG, Stiftsbergstraße 1, 74172 Neckarsulm, Germany (applicant), represented by Noerr Alicante IP S.L., Avenida México 20, 03008 Alicante, Spain (professional representative).
On 10/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 725 375 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 218 852 , namely against some of the goods in Classes 30 and 32. The opposition is based on the following earlier rights:
- international trade mark registration No 1 204 151 designating Croatia for the word mark ‘1001 CVET’;
- international trade mark registration No 558 591 designating Austria, Italy, Hungary, Benelux, Germany and France for the figurative mark ;
- Slovenian trade mark registration No 201 371 254 for the word mark ‘1001 CVET’;
- Slovenian trade mark registration No 9 080 589 for the figurative mark ;
- Slovenian trade mark registration No 9 080 588 for the figurative mark ;
- Croatian trade mark registration No 970 543 for the figurative mark .
The opponent invoked Article 8(1)(b) EUTMR.
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 12/07/2016, the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit, after an extension, expired on 24/01/2017.
In the present case, the evidence filed by the opponent and received by the Office on 19/12/2016 consists of registration certificates for all the earlier trade marks, accompanied by translations into the language of the proceedings. The opponent also submitted evidence of use of the earlier marks in Slovenia, Croatia, Hungary, Italy and the Netherlands.
However, the certificates show that the above trade mark registrations are in the name of ‘ŽITO prehrambena industrija d.d.’ and not in the opponent’s name, ‘Podravka prehrambena industrija d.d.’ The opponent claims in its observations that it recently acquired ŽITO prehrambena industrija d.d., Ljubljana, and there is an economic link between the two parties. However, there is no document in the file that could prove its entitlement to file the opposition and that the opponent is authorised by the trade mark owner to file an opposition.
Bearing in mind the foregoing, the Office concludes that the opponent did not submit adequate evidence to prove, within the time limit set by the Office, namely on or before 24/01/2017, the opponent’s ownership of the earlier rights invoked and its entitlement to file the opposition.
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.
The Opposition Division
Justyna GBYL | Katarzyna ZANIECKA | Boyana NAYDENOVA |
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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.