CTMP | Decision 2296708 - TMP Intellectual Property Holdings, LLC v. Anne M. Schüller

Date Published: Oct 1, 2017

OPPOSITION No B 2 296 708

TMP Intellectual Property Holdings, LLC, 125 Broad Street, 10th Floor, New York, 10004, United States of America (opponent), represented by Murgitroyd & Company, Scotland House, 165-169 Scotland Street, Glasgow  G5 8PL, United Kingdom (professional representative)

a g a i n s t

Anne M. Schüller, Harthauser Str. 54, 81454 München, Germany (applicant), represented by Würtenbergerkunze, Maximiliansplatz 12b, 80333 München, Germany (professional representative).

On 11/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 296 708 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 12 090 718 ‘CTMP’ (word mark), namely against all the goods and services in Classes 16, 35 and 41. The opposition is based on the following seven earlier marks: (1) European Union trade mark registration No 706 648 ‘TMP WORLDWIDE’ (word mark), (2) Benelux trade mark registration No 695 137 ‘TMP WORLDWIDE’ (word mark), (3) Czech trade mark registration No 228 316 ‘TMP WORLDWIDE’ (word mark), (4) French trade mark registration No 97 709 706 ‘TMP WORLDWIDE’ (word mark), (5) French trade mark registration No 97 709 707 ‘TMP’ (word mark), (6) Hungarian trade mark registration No 160 248 ‘TMP WORLDWIDE’ (word mark) and (7) Polish trade mark registration No 140 372 ‘TMP WORLDWIDE’ (word mark). The opponent invoked Article 8(1)(b) EUTMR and, in relation to the earlier mark under (1) also Article 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 national trade marks listed above in the ‘Reasons’ section under (2) to (7) inclusive, on which the opposition is, inter alia, based.

On 22/01/2014 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. Following the suspension of the opposition proceedings and a further extension of the period before the commencement of the adversarial part of the proceedings, this time limit expired on 21/11/2016.

The opponent did not submit any evidence concerning the substantiation of the aforementioned 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 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, as far as it is based on earlier Benelux trade mark registration No 695 137, Czech trade mark registration No 228 316, French trade mark registrations No 97 709 706 and No 97 709 707, Hungarian trade mark registration No 160 248 and Polish trade mark registration No 140 372.

The examination of the present opposition will continue on the basis of the remaining earlier mark, namely European Union trade mark registration No 706 648.

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 mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has 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 all the trade marks on which the opposition is based.

The request was filed in due time and is admissible as the remaining earlier EU trade mark was registered more than five years prior to the relevant date mentioned above.

On 25/01/2017, the opponent was given two months to file the requested proof of use.

The opponent did not furnish any evidence concerning the use of the remaining earlier trade mark 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) EUTMR and Rule 22(2) EUTMIR as far as it is based on European Union trade mark registration No 706 648.

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

Keeva DOHERTY

Biruté SATAITE-GONZALEZ

Oana-Alina STURZA

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.