GSM GUMPERT PURE GERMAN SPEED | Decision 2478421 - Sino Partner Global v. Roland Gumpert
Date Published: Sep 22, 2017
OPPOSITION No B 2 478 421
Sino Partner Global, Offshore Incorporations Centre, Road Town Tortola, Virgin Islands of Great Britain (opponent), represented by K&L Gates LLP, Markgrafenstraße 42, 10117 Berlin, Germany (professional representative)
a g a i n s t
Roland Gumpert, Welserstraße 2, 85051 Ingolstadt, Germany (applicant).
On 11/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 478 421 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 13 441 365, namely in Classes 12, 14, 16, 18 and 25. The opposition is based on German trade mark registration No 302 008 079 016. The opponent invoked Article 8(1)(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.
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.
According to Rule 98(1) EUTMIR, when a translation of a document is to be filed, the translation must identify the document to which it refers and reproduce the structure and contents of the original document.
In the present case the evidence filed by the opponent is not in the language of the proceedings.
On 30/03/2015 the opponent filed a document in the language of the proceedings containing data concerning the trade mark on which the opposition is based and on 02/06/2017 (within the deadline for substantiation) the opponent filed a print out in German from the official database. However, such document does not meet the requirements set in Rule 98(1) EUTMIR.
In this context the Opposition Division notes that the document submitted by the opponent on 30/03/2015 in the language of proceedings does not contain all the relevant data of the print out from the official database of 02/06/2017, namely no specification of goods and services in the language of proceedings and the designations of colour are not translated into the language of proceedings either. Furthermore, the document of 30/03/2015, which is in the language of proceedings, misses some other data that does appear in German in the official print out. Hence, said document does not reproduce the structure and contents of the evidence to be translated.
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.
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.
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
Beatrix STELTER | Swetlana BRAUN | Julia SCHRADER |
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.