Automoto | Decision 2705310 - R.M.P. v. CRM S.r.l.
Date Published: Sep 28, 2017
OPPOSITION No B 2 705 310
R.M.P. Société par Actions Simplifiée, 16 rue du Dôme, 92100 Boulogne-Billancourt, France (opponent), represented by Markplus International, 39 rue Fessart, 92100 Boulogne-Billancourt, France (professional representative)
a g a i n s t
CRM S.r.l., Via Melzo 9, 20129 Milano, Italy (applicant), represented by Gianluca De Cristofaro, Via della Moscova 18, 20121 Milano (MI), Italy (professional representative).
On 19/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 705 310 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 and services of European Union trade mark application No 15 038 599 , namely against goods and services in Classes 16, 35 and 41. The opposition is based on French trade mark registration No 3 673 073 . The opponent invoked Article 8(1)(b) and 8(5) 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.
In the present case the notice of opposition was not accompanied by any evidence as regards the earlier trade mark on which the opposition is based. In the notice of opposition, the organisation ‘R.M.P société par actions simplifiée à associé unique’ was entered as the sole opponent.
On 27/05/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit further material for substantiation of its earlier right, namely until 01/10/2016 (the substantiation period). Following a request by the opponent (dated 30/09/2016), the Office extended this time limit. The new time limit expired on 01/12/2016.
On 01/12/2016 (within the time limit) the opponent submitted an excerpt in French from the database of the French National Office (‘INPI’) for the earlier trade mark and a translation of this excerpt in English. The excerpt indicates as a ‘submitter’ of the earlier trade mark the company ‘Hachette Filipacchi Presse, Société Anonyme’. Furthermore, under the title ‘Registration’, there is an entry, specifying the following: ‘partial ownership of transmission regarding the holders of 2014-09-22 No. 632, 176 (BOPI 2014-44) Beneficiary: RMP’. There is no further indication on the submitted document regarding the transmission of ownership, its extent and details, and how it is distributed between the owners/co-owners.
The opponent did not submit any other documents or information regarding the ownership of the earlier right. Respectively, there is no information on how the owners/ co-owners exercise their rights (e.g. what are the rights attributed to each one of the owners, whether the ownership is divided in respect of goods/services or whether consent is needed from one of the owner in order for the other to exercise the rights given by the ownership over the mark or a part of it).
Furthermore, the submitted document points that the ‘partial ownership of transmission’ was processed on 22/09/2014, meaning that the transfer has taken place before the end of the substantiation period, namely 01/12/2016. Following from Rule 19(2) EUTMIR, the opponent had to file evidence proving its entitlement to file the opposition on or before 01/12/2016.
The evidence submitted by the opponent and mentioned above is not sufficient to substantiate the opponent’s earlier trade mark and its right to file the opposition. Even if it can be accepted that the entity pointed as ‘beneficiary’ of the ‘partial ownership’, namely ‘RMP’ is the opponent’s entity, namely R.M.P. Société par Actions Simplifiée, it is not clear what are the rights attributed to this entity in regard to the earlier mark and whether these rights could be executed solely (by one of the owners) or only with the consent of the other owner/owners of the earlier right.
Following from the above, the Opposition Division considers that the submitted by the opponent document (the excerpt from the database) does not provide sufficient information regarding the entitlement of the opponent 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 holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
André Gerd Günther BOSSE | Irina SOTIROVA | Erkki MÜNTER |
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.