Djili DS | Decision 1591539 - Victor Lupu v. ET Djili-soy-Djihangir Ibriam
Date Published: Sep 22, 2017
OPPOSITION No B 1 591 539
Victor Lupu, 85 CPT Juverdeanu ST, Bucharest (Sector 2), Romania (opponent), represented by Paula Adriana Acsinte, 17, Decebal, BL S16 Entrance 2 Floor AP 30 Sector 3, 030964 Bucharest, Romania (professional representative)
a g a i n s t
ET Djili-soy-Djihangir Ibriam, 16 Pliska str., 7650 Dulovo, Bulgaria (applicant), represented by Mariana Iorgulescu, str.Fagetului 144 bl.ST2,sc.B,ap.46, 900075 Constantza, Romania (professional representative).
On 13/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 1 591 539 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 of European Union trade mark application No 8 404 551 ‘’, namely all the goods applied for in Classes 29, 31 and 32. The opposition is based on the Romanian trade mark registration No 101 795 ‘’ covering goods and services in Classes 29, 31 and 35 (hereinafter the ‘Romanian Mark’). The opponent invoked Article 8(1)(a) and Article 8(1)(b) EUTMR.
CEASING OF EXISTENCE OF THE EARLIER ROMANIAN MARK ON WHICH THE OPPOSITION IS BASED
According to Article 41(1)(a) EUTMR, within a period of three months following the publication of an EU trade mark application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8:
- by the proprietors of earlier trade mark referred to in Article 8(2) as well as licensee authorised by the proprietors of those trade marks, in respect of Article 8(1) and 8(5);
[…].
Further, according to Article 8(2) EUTMR, ‘earlier trade marks’ means:
(a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the European Union trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:
[…]
- trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property;
[…].
Therefore, the legal basis of the opposition requires the existence and validity of an earlier right within the meaning of Article 8(2) EUTMR.
Outline of the relevant facts
On 11/12/2009 the opponent filed a notice of opposition against the registration of European Union trade mark application No 8 404 551 and claimed as the basis of the opposition the Romanian Mark.
On 08/04/2010, the opponent was notified that the opposition has been found admissible insofar as it was based on the Romanian Mark and was given two months, commencing after the ending of the cooling-off period, to complete the opposition by furnishing facts, evidence and arguments. This time limit expired on 18/08/2010.
On 01/10/2010, the applicant informed the Office that it had challenged the Romanian Mark before the Romanian authorities for registration in bad-faith and requested the suspension of the opposition proceedings until a final decision is rendered in Romania.
On 13/10/2010, the Office notified both parties that the opposition proceedings have been suspended because there is a cancellation action pending against the Romanian Mark and that the suspension will last until a final decision is taken in national proceedings.
By judgment no 1248 of 21/06/2011, the Bucharest Court decided on file no 12934/3/2010 and declared the Romanian Mark invalid. The judicial instance ordered the publication of the cancellation in the Official Industrial Property Bulletin and the entry of the cancellation in the National Register of Trade marks. Further appeals were filed before the domestic courts, namely the Bucharest Court of Appeal and the Romanian Supreme Court respectively.
On 10/06/2016, the applicant requested that the opposition is rejected and the registration procedure of the contested EUTM application continued. To support its claims, it filed the following evidence: (i) a partial English translation of the judgement no 1248 of 21/06/2011 and (ii) a certificate (a document in Romanian and English) issued by the Supreme Court of Romania on 30/05/2016 and attesting to the fact that on 27/05/2016 the Supreme Court gave the judgement no 1212 by means of which it rejected as unfounded the appeals lodged against the judgement of the Bucharest Court of Appeal in file no 12934/3/2010.
By a communication dated 14/06/2016, the opponent requested the Office to maintain the suspension. He informed of his intention to challenge the judgment no 1212 of the Supreme Court by filing an extraordinary appeal for annulment provided by the Romanian Code of Civil Procedure. On 05/08/2116, the opponent provided evidence of having filed said appeal.
On 23/06/2016 and respectively 17/10/2016, the applicant reiterated its request to have the opposition proceedings resumed. Essentially, it showed that the Romanian Mark has been irrevocably cancelled in May 2016 and such a decision is enforceable. It also pointed out that the opponent is only using delaying tactics and that an appeal for annulment is an extraordinary remedy which does not suspend the enforcement of a final and irrevocable judgement.
On 20/12/2016, the applicant sent another communication. It informed the Office that the Supreme Court irrevocably rejected the appeal for annulment filed by the opponent and that the Romanian Mark was irrevocably cancelled. In addition, the applicant requested again that the opposition proceedings are resumed and the opposition rejected.
On 02/02/2017, the applicant submitted a certificate (a document in Romanian and its English translation) issued by the Supreme Court and attesting to the fact that on 16/12/2016 said instance gave judgement no 2367 by means of which it irrevocably rejected as unfounded the extraordinary appeal for annulment filed by Lupu Victor (i.e. the opponent) against the judgment no 1212 of 27/05/2016.
On 20/03/2017 the applicant further submitted an extract from TMView in relation to the Romanian Mark showing, inter alia, that this right ceased to exist.
On 29/03/2017, the opponent was notified that the opposition proceedings are being resumed and was given two months to inform the Office whether or not it maintains the opposition. This time limit expired on 03/06/2017.
The opponent replied on 31/05/2017. He showed that the judgement of the Supreme Court no 2367 of 16/12/2016 is not yet reasoned and depending on the explanations to be given by the Court, he could consider if there are other judicial remedies to be followed. In particular, the opponent showed that he can ‘consider the possibility of investing the European Court for Human Rights for violation’ of certain articles from the European Convention on Human Rights.
The opponent further claimed that he is the ‘holder of an unregistered sign’ (), used in the course of trade in Romania since 1991 to identify his products ‘Djili’ (i.e. edible seeds) and that such right was used ‘long before the applicant filed for the contested mark’. As a consequence, in the opponent’s view, ‘the registration of the contested EUTM application is deemed to be unlawful’ and the opposition should be upheld. To support his claims, the opposing party submitted several documents, in particular copies of Romanian magazines displaying advertisements of goods bearing the sign concerned.
Assessment, other arguments and conclusion
As regards the opponent’s claim that he is the owner of the unregistered sign, it is recalled that the notice of opposition has to be filed in writing and must contain, in order to be admissible, the indications and elements laid down in Rule 15(1), (2) (a)-(c) EUTMIR (inter alia, a clear identification of the earlier mark or earlier right on which the opposition is based). Furthermore, it must be noted that an opponent can only complete or extend the notice of opposition, on its own initiative, during the three-month opposition period following the publication of the European Union trade mark application concerned.
Since this other sign was not claimed as a basis of the opposition during the three-month opposition period and, as indicated above, the opposing party cannot extend the basis of the opposition once the opposition period has expired, the opposition must be rejected as inadmissible, as far as it is based on a non-registered sign used in the course of trade in Romania.
The opponent also alleges that he may consider lodging an application with the European Court of Human Rights. It is true that, after domestic remedies have been exhausted, individuals complaining of violations of their rights have the possibility of lodging an application with the European Court of Human Rights. However, having regard to all the circumstances of the present case and the evidence on file, such a mere hypothetical intention is not deemed sufficient to justify the suspension of the opposition proceedings pursuant to Rule 20(7)(c) EUTMIR.
Indeed, it has been shown that following the judgement no 1212 of 27/05/2016 of the Supreme Court, the only earlier right on which the opposition was based has been cancelled. Furthermore, and as is apparent from the evidence on file, this judgement is final and has been enforced.
It follows from the foregoing that the Romanian Mark does no longer exist and, consequently, cannot constitute a valid trade mark on which the opposition can be based within the meaning of Article 41(1)(a) EUTMR and Article 8(2) EUTMR.
Therefore, the present opposition does not have a legal basis and, accordingly, does not comply with the requirements of the abovementioned legal provisions.
The opposition must therefore be rejected as unfounded insofar as based on the Romanian Mark.
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
Lars HELBERT | Oana-Alina STURZA | Janja FELC |
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.