M4M | Decision 2729054 - VRT, NV van Publiek Recht v. DreamWorks Animation L.L.C.
Date Published: Oct 11, 2017
OPPOSITION No B 2 729 054
VRT, NV van Publiek Recht, Auguste Reyerslaan 52, 1043 Brussels, Belgium (opponent), represented by Pronovem Marks Société Anonyme, avenue Josse Goffin, 158, 1082 Bruxelles, Belgium (professional representative)
a g a i n s t
DreamWorks Animation L.L.C., 1000 Flower Street, Glendale, CA 91201, United States of America (applicant, represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative).
On 28/03/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 729 054 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 and services of European Union trade mark application No 15 127 756, namely against all the goods and services in Classes 9 and 38. The opposition is based on Benelux trade mark No 856 029 for the figurative mark (see hereafter under 1), Benelux trade mark No 856 030 for the figurative mark (see hereafter under 2) and Benelux trade mark No 855 346 for the word mark ‘MNM let’s have …’ (see hereafter under 3). The opponent invoked Article 8(1)(b) EUTMR.
- MNM let’s have …
M4M | |
Earlier trade marks | 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 any evidence as regards the earlier trade marks on which the opposition is based.
On 29/08/2016 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 03/01/2017.
The opponent submitted the required evidence on 23/01/2017 that is, only after the expiry of the abovementioned time limit.
The opponent argues that all necessary information to identify and verify the earlier rights on which the opposition is based was provided together with the notice of opposition on 05/07/2016. However, in its letter sent on 30/08/2016 the Office requested the opponent to substantiate its earlier rights and submit further material in order to prove the existence, ownership and validity of the earlier rights by submitting appropriate evidence. Moreover, the opponent was informed that it had to substantiate all its earlier rights within the set time limit and that if this was not done, any non-substantiated earlier rights would not be taken into account.
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.
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.
The Opposition Division
Lars HELBERT | Sigrid DICKMANNS | Claudia MARTINI |
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.