ORION 1966 | Decision 2825928
Date Published: Sep 25, 2017
OPPOSITION No B 2 825 928
Orion Corporation, 30-10 Munbae-dong, Yongsan-ku, Seoul, Republic of Corea (LA) (opponent), represented by J. Lopez Patentes y Marcas, S.L., C/. Paz, nº 14-2º-3ª, 46003 Valencia, Spain (professional representative)
a g a i n s t
Aglaia Bakou, Dimosthenous 166, 17673 Athens, Greece (applicant 1), Vasiliki Karkani, 166-68 Dimosthenous St. Kallithea, Athens, Attica, 17673 Athens, Greece (applicant 2), represented by Marks & Us Marcas y Patentes, Ibañez de Bilbao 26, 8º dcha, 48009 Bilbao (Vizcaya), Spain (professional representative).
On 28/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 825 928 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 (Classes 29 and 30) of European Union trade mark application No 15 845 531. The opposition is based on Spanish trade mark registration No 2 038 491. 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.
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. On 30/12/2016, the opponent submitted a document along with the notice of opposition which seems to be issued by the Spanish trade mark office with some parts of the text in English and some parts in Spanish, the latter not being the language of proceedings.
However, as the Spanish trade mark office is not issuing excerpts in English, the document cannot be considered as an original extract. Moreover, in case that the opponent filed it as translation of the extract, the translation is insufficient and the corresponding original that has to be filed as well is missing. Thus, the document is not sufficient as evidence.
On 10/01/2017 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. This time limit expired on 22/05/2017.
In the present case the evidence filed by the opponent on 22/05/2017 is neither in the language of the proceedings; namely the database extract of the earlier Spanish mark which is only partially translated and another document, which seems to be the renewal certificate, however, completely in Spanish. In the first case, the document cannot be considered as valid evidence (as seen before) and, relating to the renewal certificate, the opponent failed to submit the necessary translations.
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 applicants 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 applicants are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Julia SCHRADER | Swetlana BRAUN | Claudia MARTINI |
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.