WE AIRSOFT EUROPE | Decision 2408592 - WE Tactical Training (International) Limited v. Nuprol Ltd

Date Published: Sep 28, 2017

OPPOSITION No B 2 408 592

WE Tactical Training (International) Limited, Rm 501, Prosper Commercial Building, 9 Yin Chong Street, Mong Kok, Kowloon, Hong Kong Special Administrative Region of the People’s Republic of China (opponent), represented by Bromhead Johnson, Sovereign House, 212-224 Shaftesbury Avenue, London WC2H 8HQ, United Kingdom (professional representative)

a g a i n s t

Nuprol Ltd, C/O CWM, 1a High Street, Epsom KT19 8DA, United Kingdom (applicant), represented by Hiddleston Trade Marks, Polhill Business Centre, London Road, Polhill Halstead, Sevenoaks Kent TN14 7AA, United Kingdom (professional representative).

On 15/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 408 592 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 12 838 033 for the figurative mark , namely against all the goods in Classes 13 and 28. The opposition is based on European Union trade mark registration No 8 530 561 for the figurative mark , in relation to which the opponent invoked Article 8(1)(b) EUTMR and Hong Kong trade mark registration No 301 927 972  in relation to which the opponent invoked Article 8(3) EUTMR. Furthermore, the opposition is also based on the non-registered trade marks ‘WE’, ‘WE AIRSOFT’, and in the United Kingdom, in relation to which the opponent invoked Article 8(4) EUTMR.

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.

If the opposition is based on an earlier right within the meaning of Article 8(4) of the Regulation, the opposing party must provide evidence of the acquisition, continued existence and scope of protection of that right – Rule 19(2)(d) EUTMIR.

If the opposition is based on Article 8(3) of the Regulation, the opposing party must provide evidence of the opposing party's proprietorship and of the nature of his relationship with the agent or representative – Rule 19(2)(e) EUTMR.

The opponent did not have to submit any documents as far as the existence and validity of the European Union trade mark registration No 8 530 561 for the figurative mark is concerned. Being an EUTM, the examination of the substantiation is done ex officio with respect to the data contained in the Office’s database.

According to the Office’s database, European Union trade mark registration No 8 530 561 is registered in the name of ‘WE MODEL CO., LTD’ (Taiwan) while the opponent is ‘WE Tactical Training (International) Limited’.

The opponent claims in the notice of opposition that it is the licensee of the proprietor of the earlier European Union trade mark registration and is authorised and entitled to file the opposition under the provisions of Rule 15(2)(h)(iii) EUTMIR.

This statement was found sufficient for admissibility purposes.

However, as the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence, the opponent has to demonstrate that there is a valid licence agreement and that it is authorised by the trade mark owner to start actions in defence of the mark.

On 24/09/2014, the opponent was given two months, commencing after the ending of the cooling-off period, to substantiate its entitlement to file the opposition. This time limit expired, after extensions, on 29/01/2017.

The opponent did not submit any evidence to support its allegations. No evidence was provided to prove that the opponent was authorised to file an opposition in its capacity of licensee of the earlier EUTM, likewise there was no evidence of the opposing party's proprietorship of Hong Kong trade mark No 301 927 972  and of the nature of his relationship with the agent or representative, nor was there any evidence on the acquisition, continued existence and scope of protection of the non-registered trade marks ‘WE’, ‘WE AIRSOFT’, and in the United Kingdom.

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

Chantal VAN RIEL

Saida CRABBE

Ric WASLEY

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.