OPPOSITION No B 2 813 361

 

Asal Vision, S.L., Marmolista, 8 – 10, 29013 Málaga, Spain (opponent), represented by Iberpatent, Félix Boix, 9-1° Derecha, 28036 Madrid, Spain (professional representative)

 

a g a i n s t

 

Sol Solution (Société par Actions Simplifiée), ZAC des Portes de Riom, Avenue Georges Gershwin, 63200 Riom (holder), represented by Cabinet Lavoix, 62 rue de Bonnel, 69448 Lyon Cédex 03, France (professional representative).

 

On 25/05/2017, the Opposition Division takes the following

 

 

DECISION:

 

1.        Opposition No B 2 813 361 is rejected as inadmissible.

 

2.        The opposition fee will not be refunded.

 

 

REASONS:

 

The opponent filed an opposition against all the goods, in Class 9, of international registration designating the European Union No 1 291 951 ‘SOILVISION’. The opposition is based on European Union trade mark registration No 14 398 606 ‘SOLVISION’. The opponent invoked Article 8(1)(b) EUTMR.

 

 

ADMISSIBILITY

 

According to Article 41(1) EUTMR, within a three-month period following the publication of an EU trade mark, notice of opposition to registration of the trade mark may be given by on the grounds that it may not be registered under Article 8 by proprietors of earlier trade marks referred to in Article 8(2) EUTMR.

 

According to Article 8(2) EUTMR, ‘earlier trade marks’ means trade marks with a date of application for registration which earlier than the date of application of the EU trade mark, taking account, where appropriate of the priorities claimed in respect of those marks.

 

Whether the trade mark invoked as a basis of the opposition is an earlier mark is an issue of admissibility of the opposition. When the only earlier mark is or all earlier marks are not earlier, the Office will inform the opponent of the inadmissibility and invite it to comment on that issue before a decision on inadmissibility is taken.

 

In the present case, the contested international registration designating the European Union enjoys the priority date of a French trade mark filing, namely 16/06/2015. The earlier EUTM was filed on 20/07/2015 and no priority was claimed.

 

Therefore, the opponent’s EUTM does not constitute an earlier trade mark within the meaning of Article 8(2) EUTMR.

 

On 09/01/2017 the Office informed the opponent of the inadmissibility of the opposition and invited it to submit comment on the matter by 14/03/2017. The Office’s letter pointed out that the deficiency could not be remedied.

 

On 14/03/2017, the opponent replied that it had been informed by the Office itself, in accordance with Article 155(4) EUTMR, that its EUTM had been mentioned in the European Union search report of the contested international registration. In support of its claim, the opponent submitted a copy of the Office’s letter (surveillance letter). It  also quoted Article 155(4) EUTMR in order to make the point that communications from the Office according to Article 155(4) EUTMR are intended to inform the proprietors of earlier trade marks cited in the European Union search report of the publication of the international registration designating the European Union as provided in Article 152(1) EUTMR.

 

Indeed the Office’s letter as mentioned by the opponent did not take account of the priority date of the contested trade mark.  However, this cannot change the fact that the opponent’s mark is not earlier.

 

The Opposition Division notes that the letter included a paragraph specifically informing the opponent of the informative purpose of the letter and invited it to carefully consider the information concerning the trade marks involved in the Office’s eSearchplus database.

 

Since the only trade mark invoked as basis of the opposition is not earlier, the opposition must be rejected as inadmissible

 

The opposition fee will not be refunded. In accordance with Rule 18(5) EUTMIR, the Office only refunds the opposition fee in view of a withdrawal and/or restriction of the trade mark during the cooling-off period.

 

 

 

 

The Opposition Division

 

 

Frédérique SULPICE	Catherine MEDINA	Begoña URIARTE VALIENTE

 

 

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.