MED COMFORT | Decision 2551979
Date Published: Sep 28, 2017
OPPOSITION No B 2 551 979
AWG Allgemeine Warenvertriebs GmbH, Imanuel-Maier-Str. 2, 73257 Köngen, Germany (opponent), represented by Ostriga Sonnet Wirths & Vorwerk, Friedrich-Engels-Allee 430-432, 42283 Wuppertal, Germany (professional representative)
a g a i n s t
AMPri Handelsgesellschaft mbH, Rolf-Uhrmacher-Allee 1a, 21435 Stelle, Germany (holder), represented by Glawe, Delfs, Moll, Rothenbaumchaussee 58, 20148 Hamburg, Germany (professional representative).
On 08/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 551 979 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods of international registration designating the European Union No 1 225 503, namely against all the goods in Classes 24 and 25. The opposition is based on German trade mark registration No 39 732 322 ‘Medi Comfort’. The opponent invoked Article 8(1)(b) EUTMR.
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.
On 20/07/2015, along with the notice of opposition, the opponent submitted an extract from the online register of the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office) and an additional document, containing the translation of the list of goods in Classes 24 and 25. The extract from the online register does not contain entries in the language of the proceedings.
On 21/09/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence for substantiation of the earlier right and respective translations. This time limit expired on 21/01/2016.
The opponent did not submit any further evidence concerning the substantiation of the earlier trade mark.
Even though, the extract from the online register contains the ‘Internationally agreed Numbers for the Identification of (bibliographic) Data’ (INID) codes from which information is extracted regarding some of the entries, which are self-explanatory (e.g. name of the owner, registration date), there is no translation provided regarding the type of the mark and the legal and procedural status of the mark (e.g. opposition proceedings against the registration of that mark).
The Court has held that when the national offices provide an English translation all elements must be translated, for example entries concerning the type of mark, or the mark status (registered, opposed, etc.), as these are relevant for the case. Only irrelevant administrative indications (e.g. previous transfers of ownership that do not affect the opposition, administrative entries on fees, etc.) with no bearing on the case may be omitted from the translation (judgment of 29/09/2011, T-479/08, Shoe with two stripes, EU:T:2011:549).
In the case at hand, the extract in question contains entries that are not translated but that have bearing on the case. The translation of these entries into the language of the proceedings has not been provided by the opponent.
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 holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
André Gerd Günther BOSSE | Irina SOTIROVA | Erkki MÜNTER |
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.