SEKM | Decision 2746694
Date Published: Sep 25, 2017
OPPOSITION No B 2 746 694
Crédit du Nord Société Anonyme, 28, place Rihour, 59000 Lille, France (opponent), represented by Cabinet Fedit-Loriot, 38, avenue Hoche, 75008 Paris, France (professional representative)
a g a i n s t
SEKM GmbH, Leopoldstrasse 153, 80804 München, Germany (applicant).
On 10/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 746 694 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 services of European Union trade mark application No 15 046 121, namely against all the services in Class 36. The opposition is based on French trade mark registration No 1 273 191. 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 evidence filed by the opponent comprises the following:
- application form for French trade mark registration No 1 273 191, dated 06/04/1984, accompanied by a translation thereof, in which the goods and services for which registration is sought are listed;
- renewal certificate for French trade mark registration No 1 273 191, dated 04/03/2004, accompanied by a translation thereof, in which it is stated that the renewal is for all the goods and services of the registration concerned and the classes of goods and services concerned are listed;
- renewal certificate for French trade mark registration No 1 273 191, dated 13/03/2014, accompanied by a translation thereof, in which it is stated that the renewal is for all the goods and services of the registration concerned and the classes of goods and services concerned are listed.
The evidence listed above is not sufficient to substantiate the opponent’s earlier French trade mark registration No 1 273 191, because it does not contain all the necessary elements.
In particular, as is apparent from the above, neither the registration certificate (or an equivalent document) nor the renewal certificate of 1994 was submitted; in addition, the renewal certificates that were provided (Documents 2 and 3) do not specify for which goods and services the mark was renewed, stating only for which classes of goods and services it was renewed.
Therefore, it is not possible to determine from these documents the goods and services for which earlier French trade mark No 1 273 191 was renewed and for which it is therefore now registered, that is, the scope of protection of the earlier mark.
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
Carmen SÁNCHEZ PALOMARES | Marine DARTEYRE | Julie GOUTARD |
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.
Although the winning party is no longer represented by a professional representative at the time of rendering this decision, it was represented by a professional representative within the meaning of Article 93 EUTMR in the course of the opposition proceedings. Therefore, the winning party incurred representation costs which it is entitled to recover, in accordance with Rule 94(7)(d) EUTMIR.