DENTALPOINT | Decision 2774308

Date Published: Sep 25, 2017

OPPOSITION No B 2 774 308

Francisco Castellanos Medina, C/ Romero de Torres, Nº 12, 41013 Sevilla, Spain (opponent), represented by Fernández-Palacios Abogados, S.L.P., Plaza de la Magdalena, 9 - 4º, 41001 Sevilla, Spain (professional representative)

a g a i n s t

Dentalpoint, Růžová 41, 37701  Jindřichův Hradec, Czech Republic (applicant).

On 17/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 774 308 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

 

The opponent filed an opposition against all the services of European Union trade mark application No 15 316 631, namely against the services in Classes 40, 41 and 44. The opposition is based on Spanish trade mark registration No 2 938 542.  

The opponent invoked Article 8(1)(a) and (b) EUTMR.

Earlier trade mark	Contested sign

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 adequate evidence as regards the earlier trade mark on which the opposition is based.

On 28/09/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the above mentioned material. This time limit expired on 10/02/2017. However, the opponent did not file any further evidence within this time limit.

In particular, in the present case, the evidence filed by the opponent with the opposition notice consists of an extract in Spanish and a translation in English. The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark, because the Spanish document submitted is of unknown origin: indeed, it does not contain an official identification of the authority with which the mark is registered.  

It follows that the evidence filed by the opponent cannot be taken into account.

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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Oana-Alina STURZA

Edith Elisabeth VAN DEN EEDE

Andrea VALISA

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.