Ooh La la | Decision 2811753
Date Published: Sep 28, 2017
OPPOSITION No B 2 811 753
Essência Do Vinho - Promoção E Distribuição De Vinho Lda, R. Mouzinho Da Silveira, 54/56, 4050-414 Porto, Portugal (opponent)
a g a i n s t
"БОНОНИЯ ЕСТЕЙТ" ООД, ж.к. Зона Б-5-3, Средна Гора No 27Б р-н Възраждане, 1000 София, Bulgaria (applicant).
On 19/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 811 753 is rejected as inadmissible.
2. The opposition fee will not be refunded.
REASONS:
The opponent filed an opposition (document in Spanish) against all the goods of European Union trade mark application No 15 777 212 , namely against all the goods in Class 33. The opposition is based on Portuguese trade mark registration No 558 660 ‘OH LÁ LÁ!’. Even though the opponent did not expressly indicate the grounds, given that the earlier mark is identified, the opposition can be considered to be based on Article 8(1) EUTMR.
ADMISSIBILITY
According to Article 119(6) EUTMR, if the language chosen for the notice of opposition is neither the language of the application for a trade mark nor the second language indicated when the application was filed, the opposing party is required to produce a translation either into the language of application, provided that it is a language of the Office, or into the second language indicated when the application was filed.
According to Rule 16(1) EUTMIR, the time limit referred to in Article 119(6) EUTMR within which the opposing party has to file a translation of his opposition is one month from the expiry of the opposition period.
According to Rule 17(3) EUTMIR, where the opposing party does not submit a translation as required under Rule 16(1) EUTMIR, the opposition will be rejected as inadmissible. Where the opposing party submits an incomplete translation, the part of the notice of opposition that has not been translated will not be taken into account in the examination of admissibility.
In the present case the first and second languages of the application are Bulgarian and English. Consequently, the language of the opposition proceedings may only be the second language, namely English. As mentioned above, the opposition was filed in Spanish. The opposition period ended on 06/12/2016 and therefore the period for filing a translation of the opposition into English expired on 06/01/2017.
The opponent failed to file a translation of its notice of opposition before the expiry of the above mentioned deadline.
The Office informed the opponent of the deficiency in its notification dated 26/12/2016. The opponent was set a time limit of two months, until 07/03/2017, to submit any comments on the matter. By means of the same letter, the opponent was also informed that the deficiency could only have been remedied either before the expiry of the opposition period or before the expiry of the period for the submitting of the translation.
The opponent did not reply within the prescribed time limit.
For the sake of completeness it is noted that on 14/03/2017, the opponent submitted a letter (one page in English) accompanied by one page in Portuguese, a copy of the opposition (in Spanish) and the evidence of paying the opposition fee (also in Portuguese). It admits that the ‘intention of opposition’ against the EUTM application No 15 777 212 was filed in Spanish and puts forward that it was waiting to receive a communication from the Office ‘to present the opposition translated to Bulgarian or English’. The opponent also claims that no such letter was received and they knew ‘only with the letter of 26.12.2016’ that it had been sent. It also explains that there was a change of the address of their registered office and although they enabled a forwarding of correspondence to the new address, it must have probably failed, since they did not receive the Office’s letter and consequently they did not send ‘the requested translation of the opposition in English’.
Even though such documents cannot be taken into account as they were not received within the time limit and moreover, most of them are not translated into the language of the proceedings, it is important to note that in order to safeguard the principle of impartiality the Office does not send any communication concerning admissibility deficiencies during the opposition period. Furthermore, the Opposition Division finds it appropriate to clarify that the language requirement of the notice of opposition is an absolute admissibility requirement and the Office does not ‘invite’ the opponent to submit a translation of the opposition in the appropriate language. Pursuant to Article 119(6) EUTMR and to Rule 16(1) EUTMIR it is for the opponent to produce, on its own initiative and at its own expense, a translation of the notice of opposition within one month from the expiry of the opposition period. Where the opposing party does not submit the translation within this time limit, the opposition will be rejected as inadmissible.
The opposition must, therefore, be rejected as inadmissible.
Please note that the opposition fee will not be refunded. In accordance with Rule 18(5) EUTMIR, the Office only refunds the opposition fee in view of a withdrawal and/or restriction of the trade mark during the cooling-off period.
The Opposition Division
Solveiga BIEZA | Oana-Alina STURZA | Irina SOTIROVA |
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.