nutridex | Decision 2782194 - Australasian Conference Association Limited v. OMNIA NISASTA SANAYI VE TICARET ANONIM SIRKETI

Date Published: Oct 1, 2017

OPPOSITION No B 2 782 194

Australasian Conference Association Limited, 148 Fox Valley Road, Wahroonga, New South Wales 2076, Australia (opponent), represented by Barker Brettell LLP, 100 Hagley Road, Edgbaston, Birmingham  B16 8QQ, United Kingdom (professional representative)

a g a i n s t

Omnia Nisasta Sanayi Ve Ticaret Anonim Sirketi, Adana Haci Sabanci Osb Yunus Emre Caddesi No 8, Sariçam, Adana, Turkey (applicant), represented by Esquivel, Martin, Pinto & Sessano European Patent And Trade Mark Attorneys, Calle de Velázquez, 3 - piso 3, 28001 Madrid, Spain (professional representative).

On 07/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 782 194 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 European Union trade mark application No 15 102 429, namely against all the goods in Classes 1, 29 and 30. The opposition is based on United Kingdom trade mark registration No 3 138 677. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

NUTRI-BREX
Earlier trade mark	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 mark on which the opposition is based.

On 11/10/2016, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit was subsequently extended and expired on 16/04/2017.

The opponent did not submit any evidence concerning the substantiation of the earlier trade mark within the abovementioned time limit. The opponent was informed accordingly per communication of the Office dated 24/04/2017.

On 02/06/2017, the opponent submitted the required evidence. However, regardless of the opponent's explanations in its letter as to the delayed submission of the necessary evidence concerning the substantiation of the earlier mark, it remains that such evidence was submitted only after the expiry of the aforementioned time limit and 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

Sandra IBAÑEZ

Martina GALLE

Benoit VLEMINCQ

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.