Keywords
Summary

Keywords

1. Community trade mark - Registration procedure - Opposition - Rules on the conditions for admissibility and examination of the opposition - Application by the Office

(Council Regulation No 40/94, Art. 42; Commission Regulation No 2868/95, Art. 1, Rules 16 to 18 and 20)

2. Community trade mark - Registration procedure - Opposition - Failure to produce, within the time allowed, the translation of the registration certificate for the earlier national mark - Effect on the proceedings before the Opposition Division

(Commission Regulation No 2868/95, Art. 1, Rules 16 to 18 and 20)

Summary

$$1. It follows from Article 42 of Regulation No 40/94 on the Community trade mark, relating to notice of opposition to registration of the trade mark, read in conjunction with Rules 16, 17, 18 and 20 of the implementing regulation, that the legislature makes a distinction between, on the one hand, the conditions which the notice of opposition must satisfy, which are laid down as conditions of admissibility of the opposition, and, on the other hand, the submission of the facts, evidence and arguments and of the documents supporting the opposition, which are matters falling within the scope of the examination of the opposition.

As regards the conditions which, if not complied with in the notice of opposition, lead to rejection of the opposition as inadmissible, Rule 18(1) and (2) of the implementing regulation draws a distinction between two types of conditions of admissibility and it is only in cases in which the notice of opposition does not comply with the conditions of admissibility other than those expressly referred to in Rule 18(1) that the Office for Harmonisation in the Internal Market (Trade Marks and Designs) is required, by virtue of Rule 18(2), to inform the opponent of this and call upon him to remedy the deficiency within a period of two months before it rejects the opposition as inadmissible.

As regards evidence and documents covered by the examination of the opposition, which include, if necessary, a translation of them into the language of the opposition proceedings, if the opponent does not present them before the expiry of the period initially laid down or before the expiry of any extension of that period, the Office may lawfully reject the opposition as unfounded unless, in accordance with Rule 20(3) of the implementing regulation, it can give a ruling on it on the basis of the evidence which it may already have before it. The rejection of the opposition in such a case is not merely the result of the opponent's failure to comply with the period laid down by the Office but is also the consequence of his failure to comply with a substantive condition of opposition, since the opponent, by failing to present, within the period laid down, the relevant evidence and supporting documents, fails to prove the existence of the facts or the rights on which his opposition is based.

( see paras 31, 33, 36, 41, 44 )

2. In opposition proceedings brought against the registration of a Community trade mark under Article 42 et seq. of Regulation No 40/94, the failure by the opponent to produce within the time allowed by the Opposition Division, in accordance with Rules 16(3), 17(2) and 20(2) of the implementing regulation and in the language of the opposition proceedings, the translation of the registration certificate for the earlier national trade mark falls within the scope of the substantive examination of the opposition and does not therefore constitute a deficiency in the notice of opposition within the meaning of Rule 18(2) of the implementing regulation, relating to the conditions of admissibility of the opposition.

Consequently, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) is not under any obligation, by virtue of Rule 18(2) of the implementing regulation, to point out to the opponent the deficiency constituted by his failure to produce the translation or to grant him an additional period of two months within which to produce that translation, and in such a case Rule 18(2) may not be applied by analogy.

( see paras 52-54, 57 )