Urteile

Formzwänge im Markenwiderspruchsverfahren vor dem HABM

Tenor

1. Opposition No B 1 996 167 is rejected in its entirety.

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

Entscheidungsgründe

REASONS:

The opponent filed an opposition against all the goods and services of Community trade mark application No 10 583 862 "Digitaler Vertriebsassistent DIVA". The opposition is based on Community trade mark registration No 3 116 126 "DIVA".

The opponent invoked Article 8(1)(a) and (b) CTMR.

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 his opposition or to complete any facts, evidence or arguments that have already been submitted pursuant to Rule 15(3) CTMIR, within a time limit specified by it and which shall be at least 2 months starting on the date on which the opposition proceedings shall be deemed to commence in accordance with Rule 18(1) CTMIR.

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 the present case, on 16/05/2012 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the above mentioned material. This time limit expired on 17/09/2012.

The notice of opposition filed on 16/04/2012 and observations filed on 06/08/2012 and 13/08/2012 make it clear that the opposition was filed by SARL ASTON FRANCE.

However, Community trade mark registration No 3 116 126 "DIVA" (the "Earlier CTM"), the only earlier right on which the opposition is based, is in the name of SAS ASTON FRANCE. This is evidently not that same name as the registered owner of the Earlier CTM at the date of filing of the opposition.

Article 41 CTMR states that in respect of Article 8(1) and (2) opposition may be entered by the proprietor of an earlier trade mark or of a licensee authorized by the proprietors of an earlier trade mark. It follows that the opponent bears the burden of proving at the latest within the term fixed by the Office in accordance with Rules 16(3) and 20(2) of the Community Trade Mark Implementing Regulation (CTMIR), that it is either the registered owner of the marks on which the opposition is based or an authorized licensee of the same. According to the last sentence of Article 41(3) CTMR, the opponent may submit in support of his case facts, evidence and arguments, within a period fixed by the Office. This period is established in Rule 19(2) CTMIR. As explained above, this period expired on 17/09/2012.

Furthermore, in the Office's notification dated 16/05/2012 the opponent was invited to provide any evidence it felt necessary to substantiate its opposition on or before 17/09/2012. The opponent was also informed that:

Time limit for you to substantiate the earlier rights and submit further material. Within this time limit you may file any further facts, arguments and evidence that may be necessary or useful to support the opposition. In particular, you are required to substantiate all the earlier rights on which the opposition is based, that is, to prove the existence, ownership and validity of such rights, by submitting evidence and, within the same time limit, all appropriate translations. Please note that the Office will not inform you whether such evidence, or translations thereof, is missing. It is your own responsibility to check whether this has been or must still be done.

As mentioned above, the earlier mark was registered in the name of a company other than the opponent in the present proceedings and the opponent provided no evidence to justify this anomaly before 17/09/2012 which was the time limit for substantiating the opposition.

According to Rule (20)(1) CTMIR if until the expiry of the period referred to in Rule 19(1) the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

On 26/09/2012 the Office closed the proceeding informing the parties that the opposition was considered to be non-substantiated and that a decision would be taken.

Taking into account the above, the Office concludes that the opponent did not duly submit adequate documents to prove that it was the owner of the Earlier CTM within the prescribed time to duly substantiate its opposition.

Therefore, according to Rule 19(2) CTMIR the opponent failed to file proof of its entitlement to file an opposition based on the Earlier CTM. As no evidence was provided to substantiate the ownership of this earlier right the opponent did not prove within the deadline given that it is entitled, in accordance with the provisions of Article 41 (1)(a) CTMR, to use the Earlier CTM as basis of the opposition. Thus, the opposition must be rejected in accordance with Rule 20(1) CTMIR.

On 04/10/2010, the opponent submitted evidence of a change of the name of the opponent which explains the anomaly in the name of the opponent and that of the registered owner of the Earlier CTM. However, such evidence was submitted after the expiry of the above mentioned time limit. 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.

Therefore, according the Rule 19(2) CTMIR, the opponent failed to proof its entitlement to file an opposition based on the Earlier CTM.

Therefore, the opposition must therefore be rejected.

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) of 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
Hugh O'NEILL Blanca ARTECHE ARBIZU Claudio MARTINEZ MOECKEL

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.

Rechtsgebiete