CarFlexi | Decision 2771338
Date Published: Sep 22, 2017
OPPOSITION No B 2 771 338
Ald Automotive, S.A., Carretera de Pozuelo, 32, 28220 Majadahonda (Madrid), Spain (opponent), represented by Pons Consultores De Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010 Madrid, Spain (professional representative)
a g a i n s t
Emmanko A.G., Postrasse 24, 6300 Canton of Zug, Switzerland (applicant), represented by Marinos Papadopoulos, 122 Vassilissis Sofias Ave, 11526 Athens, Greece (professional representative).
On 14/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 771 338 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 15 510 928 ‘CarFlexi’ (word), namely Classes 9, 35, 36, 39 and 42. The opposition is based on Spanish trade mark registration No 3 582 872 (figurative). 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, such as the case at hand, 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 evidence filed by the opponent consists of an extract from the official online database of the Spanish Patent and Trade Mark Office and an extract from TMview. Both extracts contain information about the earlier mark, used as basis for the opposition.
For the reasons explained below, the evidence mentioned above is not sufficient to substantiate the opponent’s rights in the earlier trade mark.
The extract from the database of the Spanish Patent and Trade Mark Office is in Spanish language, while the language of the proceedings is English. According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document.
Further, the information in the extract from TMview is in English, with the exception of the colour claim, which is in Spanish, but it does not contain all relevant data. In particular, there is no information on the list of goods and services for which the mark is protected. It is the rule that when the extract from an official database does not contain all the required information, the opponent must supplement it with other documents from an official source showing the missing information. For the sake of completeness, since the colour claim of the mark appears in the extract in Spanish only, a translation of the colour claim should have been submitted in the given term as well.
On 22/09/2016, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. This time limit expired on 27/01/2017
The opponent did not submit a translation of the extract from the Spanish Patent and Trade Mark Office nor did it supplement the extract from TMview with the missing information on the goods and services and a translation of the colour claim of the earlier mark.
It is true that information on the goods and services of the earlier mark was provided in the notice of opposition and then in the statement of grounds, submitted by the opponent. However, the Office does not consider that information already given in the language of the proceedings in the notice of opposition, or in documents attached thereto or submitted later (e.g. explanation of grounds) amounts to a valid translation of a registration document, such as a registration certificate, even where such indications have been accepted for admissibility purposes. When translation of an extract or a certificate of registration of a trade mark is submitted, it should be identical in structure to the document being translated and should include translation of all included data.
According to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office. Accordingly, the extract from the database of the Spanish Patent and Trade Mark Office will not be taken into account, since no translation into English was provided.
In view of the above and given that information on the registered goods and services is missing from the submitted extract in the language of the proceedings, the Opposition Division concludes that no proof (either in the language of the proceedings or in another language with translation in English), of the registered goods and services of the earlier mark has been submitted by the opponent in the time limits specified by the Office.
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
Lucinda CARNEY | Teodora TSENOVA-PETROVA | Vita VORONECKAITE |
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.