NINFA | Decision 2796780
Date Published: Oct 1, 2017
OPPOSITION No B 2 796 780
Mas Olivares Ferrer. S.L., Mas de San Mateu, Sin, 17464 Sant Jordi Desvalls (Girona), Spain (opponent), represented by Manresa Industrial Property, Calle Aragó, N° 284, 4° 2°, 08007 Barcelona, Spain (professional representative)
a g a i n s t
Sociedade Agrícola João Teodósio Matos Barbosa & Filhos Lda, Alto da Serra, 2040-063 Rio Maior, Portugal (holder), represented by A.G. Da Cunha Ferreira LDA., Avenida 5 de Outubro 146-7º, 1050-061 Lisboa, Portugal (professional representative).
On 08/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 796 780 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 international registration designating the European Union No 1 300 908, namely against wines in Class 33. The opposition is based on Spanish trade mark registration No M 2 771 932. The opponent invoked Article 8(1)(b) EUTMR.
EL BLANCO DE LAS NINFAS | NINFA |
Earlier trade mark (according to the notice of opposition) | 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 evidence filed by the opponent consists of a document which provides some details about trade mark No M 2771 932 (and other trade marks), the header of which indicates ‘Boletín Oficial de la Propiedad Industrial’ (Official Bulletin of Industrial Property, in Spanish) and the date of 16/03/2008, together with its translation into English.
The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark, because it does not contain all the relevant data. Importantly, the information provided does not include the representation of the sign and there is no indication of its filing date.
On 26/05/2017, the opponent put forward that the opposition is duly substantiated since extracts from databases are valid as long as their origin is an official database.
In the present case, the document filed does not seem to be an extract from a database but an extract from an Official Bulletin. In any case, irrespective of its origin, the document does not contain all the relevant data required for substantiation of the trade mark as invoked in the notice of opposition such as, as previously mentioned, a representation of the trade mark.
According to the Guidelines for Examination in the Office, Part C, Opposition, Procedural Matters, extracts from official databases and extracts from official bulletins are acceptable as long as they indicate the official identification of the authority or database from which it originates and as long as they contain all the relevant data such as the issuing authority, the filing and/or registration numbers, the filing, priority and registration dates, a representation of the sign as filed or registered and as claimed in the notice of opposition, the goods and services covered, the expiry date of the registration (if given), the owner and other entries in the register affecting the legal or procedural status or the scope of protection of the mark.
In the present case, the document filed does not contain all the required information. The opponent should have supplemented it with other documents from an official source showing the missing information.
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
Catherine MEDINA | Frédérique SULPICE | Pedro JURADO MONTEJANO |
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.