LA CARRERA PANAMERICANA | Decision 2788027
Date Published: Sep 28, 2017
OPPOSITION No B 2 788 027
Halfords Limited, Icknield Street Drive Washford West, Redditch, Worcestershire B98 0DE, United Kingdom (opponent), represented by Hgf Limited, 4th Floor, Merchant Exchange, 17-19 Whitworth Street West, Manchester M1 5WG, United Kingdom (professional representative)
a g a i n s t
Karen Leon Grossmann, Anatole France No. 152, Col. Polanco, México D.F. 11560, Mexico (applicant), represented by Cgs Lawgate Patentes y Marcas, Cl. Muntaner 462 pral.1, 08006 Barcelona, Spain (professional representative).
On 22/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 788 027 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 in class 12 and against some of the goods and services in classes 18 and 41 of European Union trade mark application No 15 703 382 ‘LA CARRERA PANAMERICANA’. The opposition is based on the following earlier rights:
United Kingdom trade mark registration No 2 569 260 ;
United Kingdom trade mark registration No 2 184 227 ‘CARRERA’;
United Kingdom trade mark registration No 1 560 274 ‘CARRERA’;
Irish trade mark registration No 246 115 ;
Irish trade mark registration No 215 267 ‘CARRERA’;
international trade mark registration No 883 128 ‘CARRERA’ designating the Czech Republic, Portugal, Slovakia, Poland;
Irish and United Kingdom non-registered trade marks ‘CARRERA’ for Bicycles and bicycle related products such as bags.
The opponent invoked Article 8(1)(b), 8(4) and 8(5) EUTMR.
SUBSTANTIATION
UK No 2 569 260; UK No 2 184 227; UK No 1 560 274; IE No 246 115; IE No 215 267; IR No 883 128.
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 particular, if the opposition is based on a well-known mark within the meaning of Article 8(2)(c) EUTMR the opposing party must provide evidence showing that this mark is well-known in the relevant territory — according to Rule 19(2)(b) EUTMIR.
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.
On 06/12/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 11/04/2017.
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 mark, 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 these earlier marks.
NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR
Irish and United Kingdom non-registered trade marks.
According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:
(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.
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 will be 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 present case the notice of opposition was not accompanied by any evidence of use of the earlier right in the course of trade. On 06/12/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 11/04/2017.The opponent did not submit any evidence of use in the course of trade of the earlier right on which the opposition is based.
Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded in respect of these claimed earlier rights.
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
Francesca DINU | Erkki MÜNTER | Irina SOTIROVA |
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.