OPPOSITION No B 2 789 967

Maxchip International AB, Överodden 2, 19792 Bro, Sweden (opponent)

a g a i n s t

Mayk Biletti, Sportplatzgasse 32b, 2443 Leithaprodersdorf, Austria (applicant), represented by Kanzlei Ossada, Wendentorwall 2a, 38100 Braunschweig, Germany (professional representative).

On 24/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 789 967 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 of European Union trade mark application No 15 655 897, namely against all the services in Class 37. The opposition is based on European Union trade mark registration No 15 663 321. The opponent invoked Article 8(1)(a) and (b) and 8(5) EUTMR.

	Maxchip
Earlier trade mark	Contested sign

ADMISSIBILITY

According to Article 8(2)(a) EUTMR, earlier trade marks within the meaning of Article 8(1) EUTMR are those trade marks with a date of application for registration which is earlier than the date of application for registration of the European Union trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks.

According to Article 41(1)(a) EUTMR, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8 EUTMR by the proprietors of earlier trade marks referred to in Article 8(2) EUTMR, in respect of Article 8(1) and (5) EUTMR.

The opponent filed a notice of opposition against the contested EUTMA. The opposition is based on the European Union trade mark registration No 15 663 321, which was filed on 14/07/2016. The contested European Union trade mark application was filed on 14/07/2016. Therefore, the contested trade mark has a filing date which is the same as the filing date of the opponent’s European trade mark registration.

The Office informed the opponent of the deficiency in its notification dated 03/11/2016, namely that the mark on which the opposition is based is not actually an earlier right within the meaning of Article 8(2) EUTMR. The opponent was set a time limit of two months, until 08/01/2017, to submit any comments on the matter.

The opponent did reply within the prescribed time limit and provided the following arguments:

The opponent’s trade mark ‘MAXCHIP’ has been used by the company Maxchip since its establishment and is still being used by Maxchip International AB and Maxchip Chiptuning GmbH, both owned by Mr Sven Joachim Nyberg. The contested trade mark is filed by a former employee of Maxchip Chiptuing GmbH, Mr. Mayk Biletti who left the company in July 2016 under less friendly terms and since then made several efforts of making business very difficult for Maxchip International AB and Maxchip Chiptuning GmbH.

The Opposition Division must dismiss the opponent’s arguments as they are not relevant in the present case. For an earlier right to be earlier it must have, in the absence of any priority, an application date that is prior to the day on which the contested EUTMA has been filed. In case of conflict between a national mark and a EUTM application, the hour and the minute of filing of the national mark is not relevant for determining which mark is earlier (22/03/2012, C-190/10, Génesis, ECLI:EU:C:2012:157).

According to the data, the application date of the contested mark coincides with the filing date of the opponent’s mark. The certificate does not show any priority.

As the opponent’s notice of opposition cited no other rights in support of its opposition, according to Article 31 EUTMR, the European Union trade mark registration No 15 663 321 on which the opposition is based cannot be considered as an earlier right within the meaning of Article 8(2) EUTMR and 41(1) EUTMR and consequently the opposition cannot be successfully based on this mark.

The opposition must therefore, be rejected as inadmissible.

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

Lars HELBERT

Janja FELC

Judit NÉMETH

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.