Commodore | Decision 2576315 - Polabe Holding N.V. v. Trademarkers N.V.
Date Published: Sep 25, 2017
OPPOSITION No B 2 576 315
Polabe Holding N.V., L.G. Smith Boulevard 62, Oranjestad, Aruba (opponent), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, the Netherlands (professional representative)
a g a i n s t
Commodore International Ltd., 3rd Floor 207 Regent Street, City of London, W1B 3HH, United Kingdom (applicant).
On 25/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 576 315 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 14 253 629 ‘COMMODORE’ (word), namely against Classes 9, 38 and 41. The opposition is based on Benelux trade mark registration ‘COMMODORE’ No 415 636 (word) and Benelux trade mark registration No 790 977 (figurative). The opponent invoked Article 8(1)(a) and (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 the particular case, the opposition is based on two registered trade marks, which are not European Union trade marks, namely two Benelux trade marks. Pursuant to Rule 19(2)(a)(ii) EUTMIR the opposing party must provide copies of the relevant registration certificates and, if applicable, of the latest renewal certificates, showing that the term of protection of the trade marks 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 mars were registered.
In the present case the notice of opposition was not accompanied by any evidence as regards the earlier trade marks on which the opposition is based.
After commencement of the adversarial part of the opposition proceedings, they were suspended on the request of both parties until 15/04/2017. On 22/04/2016 the opponent was informed that in two months, commencing after resuming the proceedings, it should submit the abovementioned material. This time limit expired on 15/06/2017.
The opponent did not submit any evidence concerning the substantiation of the earlier trade marks.
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 marks or earlier rights, 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.
Although the winning party is no longer represented by a professional representative at the time of rendering this decision, it was represented by a professional representative within the meaning of Article 93 EUTMR in the course of the opposition proceedings. Therefore, the winning party incurred representation costs which it is entitled to recover, in accordance with Rule 94(7)(d) EUTMIR.
The Opposition Division
Lucinda CARNEY | Teodora TSENOVA-PETROVA | Richard BIANCHI |
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.