B-PRO by Boomerang | Decision 1046954 - Boomerang International AB v. EL CORTE INGLES, S.A.
Date Published: Oct 1, 2017
OPPOSITION No B 1 046 954
Boomerang International AB, Kräftriket 16 A, 114 19 Stockholm, Sweden (opponent), represented by Gozzo Advokater HB, Mässansgata 18 våning 5, 400 24 Göteborg, Sweden (professional representative)
a g a i n s t
El Corte Ingles S.A., Hermosilla 112, 28009 Madrid, Spain (applicant), represented by J.M. Toro S.L.P., Viriato 56 - 1º izda, 28010 Madrid, Spain (professional representative).
On 19/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 1 046 954 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 4 761 425, namely against all the goods in Class 25. The opposition is based on Swedish trade mark registrations No 247 835 and No 229 323. The opponent invoked Article 8(1)(b) EUTMR.
The signs
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Earlier trade marks | Contested sign |
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade marks have been put to genuine use in the territories in which it is protected in connection with the goods or services for which they are registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier marks are subject to the use obligation if, at that date, they have 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 marks on which the opposition is based, namely Swedish trade marks No 247 835 and No 229 323.
The request was filed in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.
On 07/06/2007, the opponent was given two months to file the requested proof of use. This time period was extended several times due to suspension requests which were filed by the parties. The deadline to submit proof of use was extended in the letters confirming the suspensions, and the final deadline to file proof of use expired on 01/02/2016.
The opponent did not furnish 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 Rule 22(2) EUTMIR, 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 42(2) and (3) EUTMR and Rule 22(2) EUTMIR.
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
Frank MANTEY | Lars HELBERT | Claudia MARTINI |
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.