Travelpack | Decision 2120361 - Travelpack Marketing & Leisure Services Limited v. Traffics Softwaresysteme für den Tourismus GmbH

Date Published: Sep 24, 2017

OPPOSITION No B 2 120 361

Travelpack Marketing & Leisure Services Limited, 523 High Road, Wembley (Middlesex)  HA0 2DH, United Kingdom (opponent), represented by Joanne Claire Lazenby, 28 Mornington Terrace, London NW1 7RS, United Kingdom (professional representative)

a g a i n s t

Traffics Softwaresysteme für den Tourismus GmbH, Alboinstraße 36-42, 12103 Berlin, Germany (applicant), represented by Tobias Sommer, Torstr. 49, 10119 Berlin, Germany (professional representative).

On 18/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 120 361 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 and services of European Union trade mark application No 10 980 431, namely those in Classes 9, 35, 38, 39 and 42. The opposition is based on United Kingdom trade mark registration No 2 388 902, on a non-registered trade mark for the word TRAVELPACK, and on a trade and respectively a company name TRAVELPACK used in Austria, Belgium, Bulgaria, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Poland, Portugal, Slovakia, Slovenia, Spain, Sweden, The Netherlands and the United Kingdom. The opponent invoked Article 8(1)(a) and (b), Article 8(4) and Article 8(5) EUTMR.

TRAVELPACK	TRAVELPACK
Earlier rights	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/and rights, as well as evidence proving its entitlement to file the opposition.

SUBSTANTIATION OF EARLIER UK MARK REGISTRATION No 2 388 902

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 filed on 20/12/2012 and was accompanied by an extract of the official national UK trade mark office’s database as regards the earlier UK trade mark registration on which the opposition is, inter alia, based.

On 02/01/2013 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit originally was set to expire on 07/05/2013; however, following several joint requests for suspension and a request from the opponent, this time limit was extended so as to expire on 08/07/2017.

The opponent did not submit any further evidence concerning the substantiation of the earlier trade mark, which was due for renewal by 08/04/2015, thus before the time limit to submit evidence as regards the validity of the earlier mark. In particular, the evidence filed is not sufficient to substantiate the opponent’s earlier trade mark because no renewal certificate proving the validity of the earlier mark was submitted within the time limit.

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, as far as it is based on this earlier trade mark.

SUBSTANTIATION OF EARLIER NON-REGISTERED MARK, TRADE NAME AND COMPANY NAME RIGHT USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

In the present case the notice of opposition was not accompanied by any evidence of use of the invoked earlier signs in the course of trade; the explanation of grounds attached to the opposition notice merely stated specific articles of national legislation in Austria, Belgium, Bulgaria, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Poland, Portugal, Slovakia, Slovenia, Spain, Sweden, The Netherlands and the United Kingdom.

On 02/01/2013 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 08/07/2017.

The opponent did not submit any evidence of use in the course of trade of the earlier signs on which the opposition is based.

Given that in the present case one of the necessary requirements of Article 8(4) EUTMR are clearly not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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

Oana-Alina STURZA

Edith Elisabeth VAN DEN EEDE

Michele M. BENEDETTI-ALOISI

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.