ORDEAL | Decision 2557950 - V. & V. S.R.L. ITALIAN STYLE v. Pickenhahn und Erki GbR
Date Published: Sep 25, 2017
OPPOSITION No B 2 557 950
V. & V. S.R.L. Italian Style, Viale Piave, 72, Alzano Lombardo (BG), Italy (opponent), represented by Studio Torta S.P.A., Via Viotti, 9, 10121 Torino, Italy (professional representative)
a g a i n s t
Pickenhahn und Erki GbR, Sudetenlandstraße 6, 86470 Thannhausen, Germany (applicant), represented by Stephan Mechnig-Giordano, 2b rue Albert Borchette, 1246 Luxembourg City, Luxembourg (professional representative).
On 19/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 557 950 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 European Union trade mark application No 14 101 621, namely against all the goods in Class 25. The opposition is based on Italian trade mark application No 30 2015 902 343 021, which matured to registration on 02/03/2016 under number 1 666 979. The opponent invoked Article 8(1)(b) EUTMR.
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 accompanied only by evidence as regards the application of the earlier trade mark on which the opposition is based.
On 20/01/2016 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 01/06/2016 and the opponent did not submit further evidence. On 08/06/2017, the Office invited the opponent to provide a registration certificate of its earlier mark on or before 13/07/2017. The evidence submitted on 12/07/2017 shows that the trade mark was registered on 02/03/2016, that is, before the expiry of the time limit to prove of the existence, validity and scope of protection of this earlier mark, namely 01/06/2016.
Therefore, as the opponent submitted the required evidence after the expiry of the time limit of 01/06/2016 to submit such material, and as the registration was by then in force, the opposition must be rejected as unfounded. As the registration date was prior to the relevant date for the opponent to substantiate its earlier right, the opponent should have submitted on or before 01/06/2016 a copy of the registration certificate of Italian trade mark registration No 1 666 979 or equivalent documents emanating from the Italian Office.
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
Sandra IBAÑEZ | Benoit VLEMINCQ | Frédérique SULPICE |
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.