LA SENIORA DELLE NATURA | Decision 2628645
Date Published: Sep 28, 2017
OPPOSITION No B 2 628 645
Siniora Food Industries PLC, King Abdullah II Bin Al-Hussien, Industrial Estate, P.O.Box (191), Sahab, Jordan (opponent), represented by Sanjay Raphael, 62 River Plate Road, Exeter Devon EX2 7FD, United Kingdom (professional representative)
a g a i n s t
Glädje Grön i Hallarna AB, Grönsaksgatan, 411 04 Göteborg, Sweden (applicant), represented by Vamo Varumärkesombudet AB, Kungsportsavenyen 3, 411 36 Göteborg, Sweden (professional representative).
On 08/03/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 628 645 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 Classes 29, 30 and 31 of European Union trade mark application No 14 501 092. The opposition is based on international trade mark registration No 1 238 941 designating the Benelux. 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 shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall 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 shall 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 shall 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.
On 17/03/2016 the opponent was given two months, commencing after the ending of the cooling-off period (05/04/2016), to submit the above mentioned material. Following an extension, this time limit expired on 05/08/2016.
In the present case the evidence filed by the opponent on 21/12/2015 consists of an extract from WIPO’s database ROMARIN. While this is an acceptable official database, the evidence is not sufficient to substantiate the opponent’s earlier trade mark. This is because the mentioned document does not contain all the necessary elements. In particular, the extract indicates the following company as an owner of the trade mark on which the opposition is based:
SINIORA FOOD INDUSTRIES CO.
Address: P.O. Box 132, Ezaryyeh Palestinian Authority Israel,
which is a different legal entity from the opponent in the present proceedings, namely:
Siniora Food Industries PLC,
Address: King Abdullah II Bin Al-Hussien, Industrial Estate, P.O.Box (191), Sahab, Jordan.
According to Article 41(1)(a) EUTMR a notice of opposition against the registration of a trade mark on the grounds of Article 8 may be filed by the proprietors of earlier trade marks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and (5).
The Office Trade Mark Guidelines, Part C: Opposition, chapter Procedural matters, page 40-41, indicate that if the opposition is filed with B as opponent and a copy of the registration certificate shows A as owner of the earlier mark, the opposition will be rejected as not substantiated, unless the opponent has provided evidence of the transfer and, if already available, the registration of the transfer in the relevant register or the opponent has shown that A and B are the same legal entity, which has merely changed its name.
Furthermore, according to Rule 15(2)(h)(iii) EUTMIR, where the opposition is entered by a licensee or by a person who is entitled under the relevant national law to exercise an earlier right, a statement to that effect and indications concerning the authorisation or entitlement to file the opposition.
In the present case, the opponent did not file any document showing that it is the proprietor or authorised licensee of the company ‘SINIORA FOOD INDUSTRIES CO.’ from Palestinian Authority Israel. The extract of the trade mark registration does not show what the relationship between the opponent and the owner of the trade mark is. The extract does not show that a licence has been registered. Furthermore, the opponent did not file any other documents or even explanations demonstrating that it is a licensee and also that it is authorised by the trade mark owner to file an opposition.
There are no restrictions on what evidence can be submitted to support such an authorisation: for example, any express authorisation on behalf of the trade mark proprietor, such as the licence contract, is deemed sufficient, so long as it contains indications concerning the authorisation or entitlement to file the opposition.
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 shall be rejected as unfounded.
Consequently, as the opponent failed to substantiate its earlier mark, the opposition must 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.
The Opposition Division
Gueorgui IVANOV | Liliya YORDANOVA | Robert MULAC |
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.