OPPOSITION No B 2 534 223

Avinet Pty Ltd, Level 1, 136 Frome Street, Adelaide SA 5000, Australia (opponent), represented by Appleyard Lees, 15 Clare Road, Halifax, West Yorkshire, HX1 2HY, United Kingdom (professional representative)

a g a i n s t

HSE Media, Spółka z ograniczoną odpowiedzialnością, Ul. Sternicza 23/43, 43 300 Bielsko-Biała, Poland (applicant), represented by Katarzyna Sas, Kościuszki 58c, 36-020 Tyczyn, Poland (professional representative).

On 13/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 534 223 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the services in Classes 35, 41 and 42 of Community trade mark application No 13 508 511. The opposition is based on international trade mark registration No 965 868 in Classes 9 and 42 designating Spain, the European Union, Portugal, the United Kingdom, Italy and France. The opponent invoked Article 8(1)(b) CTMR.

Earlier trade mark	Contested sign

SUBSTANTIATION

According to Article 76(1) CTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be 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) CTMIR, the Office shall 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) CTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a Community 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) CTMIR.

On 18/06/2015 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 23/10/2015.

According to Rule 19(4) CTMIR, the Office shall 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.

The evidence filed by the opponent prior to the relevant time limit as mentioned above (23/10/2015) consisted of the following documents:

• A print-out dated 07/10/2015 from the database of the French Trade Marks Office in relation to the opponent´s mark. This information provided in this document is in French, and no translation into English was provided;

• A letter dated 14/10/2015 from OHIM stating that the opponent´s mark is accepted for protection in the European Union;

• A letter dated 01/07/2011 from the UK Trade Marks Office setting out that the international registration on which the opposition is based is protected in the UK;

• A letter dated 10/04/2014 from the World Intellectual Property Organisation setting out that the international registration on which the opposition is based has been granted protection in Italy;

• A certificate in Spanish from the Spanish Trade Marks Office. No translation into English of this document was provided;

• A notification from the Portuguese Trade Marks Office stating that the opponent´s trade mark has been granted protection in Portugal.

The evidence mentioned above is not sufficient to substantiate the opponent´s earlier trade mark. Regarding the letters/print outs from national offices, they are either not translated (namely the information from the French and Spanish Trade Marks Offices) or do not show all the necessary data, for instance the goods and/or services for which protection has been granted (namely the letters and notifications from the United Kingdom, WIPO and Portugal). A certificate of registration or any other equivalent evidence emanating from WIPO, such as a copy of an extract from WIPO´s on-line database ROMARIN, providing all the necessary information, would have been acceptable in this case. This is set out in the Guidelines for Examination in the Office, Part C, Opposition, page 35. On that page of the Guidelines, it is stated that:

‘As regards international registrations, the following databases are accepted:

• ROMARIN (the ‘short’ version of the extract being sufficient as long as it contains all the necessary information);

• TMview (as far as it contains all the relevant data).’

The opponent mentions in its letter dated 04/11/2015 that ‘one of the earlier rights is a Community Trade Mark and does not require substantiation’. As mentioned above, the opponent´s earlier right is an international registration. It is true that one of the designations of that international registration is the European Union. However, OHIM is not the administration by which the opponent´s trade mark was registered as required by Rule 19(2)(a)(ii) CTMIR. Although Rule 19(2)(a) CTMIR only specifically allows an exception to the rule to apply to CTMs, this exception is not deemed to extend to any other trade marks (including IRs designating the EU). The opponent´s mark is an international registration and the administration of that mark is carried out by WIPO. Therefore, it is the sole body responsible for keeping official records of any international registration regardless of designation, either the European Union or any other country.

According to Rule 20(1) CTMIR, if until expiry of the period referred to in Rule 19(1) CTMIR the opposing party has not proven the existence, validity and scope of the protection of the earlier mark or earlier right, as well as their entitlement to file the opposition, the opposition will be rejected as unfounded. Therefore, the further evidence provided by the opponent with its letter dated 04/11/2015 cannot be taken into account.

The opposition must therefore be rejected as unfounded.

COSTS

According to Article 85(1) CTMR, 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 (7)(d)(ii) CTMIR, 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

Ric WASLEY

Alexandra APOSTOLAKIS

Gailé SAKALAITÉ

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.