SDT | Decision 2810870 - ZF FRIEDRICHSHAFEN AG v. SHOWA DENSO CO., LTD

Date Published: Sep 28, 2017

OPPOSITION No B 2 810 870

Zf Friedrichshafen Ag, Löwentaler Str. 20, 88046 Friedrichshafen, Germany (opponent), represented by Zf Friedrichshafen Ag,  Dietmar Kellner, Graf-von-Soden-Platz 1, 88046 Friedrichshafen, Germany (professional representative)

a g a i n s t

Showa Denso Co., Ltd, No. 28, Da Shuen Road, Rende District, Tainan City, Taiwan (applicant), represented by Awapatent AB, Junkersgatan 1, 582 35 Linköping, Sweden (professional representative).

On 17/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 810 870 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 15 391 931, namely against all the goods in Classes 7, 9 and 12. The opposition is based on German trade mark registration No 30 538 262 for goods in Classes 9 and 12. The opponent invoked Article 8(1)(b) EUTMR.

SDC
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.

According to Rule 98(1) EUTMIR, when a translation of a document is to be filed, the translation must identify the document to which it refers and reproduce the structure and contents of the original document.

On 02/12/2016 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 07/04/2017.

On 28/03/2017, within the deadline, the opponent submitted an extract from the online register of the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office). However, the extract was not accompanied by the necessary translation into the language of the proceedings, namely English.

The only information provided in English was in the notice of opposition, filed on 30/11/2016, and in the opponent’s observations dated 28/03/2017, in which the opponent indicated in English the goods on which the opposition was based and the type of the earlier mark. These mere indications are not translations as required in accordance with the relevant rules provided in Rule 98(1) EUTMIR. A full translation that identifies the document to which it refers and that reproduces the structure and content of the original document as required by Rule 98(1) EUTMIR has not been submitted.

Even though the extract from the online register contains the ‘Internationally agreed Numbers for the Identification of (bibliographic) Data’ (INID) codes from which information is extracted regarding some of the entries, and that the opponent is not required to translate headings that are substituted or accompanied by INID codes, the INID codes can only dispense from the translation of the general categories and terms they stand for. The register extracts however also contain other sections of text which are not accompanied by INID codes and, furthermore, there are also several indications that are relevant for the proceedings and are not translated. In this respect, it should be noted that the lack of translation not only concerns the list of goods and the type of mark but also other important parts of the original document such as the issuing authority or information about the legal and procedural status of the mark.

The opponent did not submit any further evidence concerning the substantiation of the earlier trade mark.

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 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

Marta GARCÍA COLLADO

Alexandra APOSTOLAKIS

Richard BIANCHI

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.