OPPOSITION DIVISION
OPPOSITION No B 2 752 866
Aria structured Investments, 25A bld Royal, 2449 Luxembourg, Luxembourg
(opponent), represented by Aria structured Investments, Christian Denizon, 25A
bld Royal, 2449 Luxembourg, Luxembourg (employee representative)
a g a i n s t
Aria Systems Inc., 575 Market Street, 32nd Floor, San Francisco, California, 94105
United States (of America) (holder), represented by Cooley (UK) LLP, Dashwood 69,
Old Broad Street, London, EC2M 1QS, United Kingdom (professional
representative).
On 13/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 752 866 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 international registration
designating the European Union No 1 297 163 , namely
against all the services in Classes 35, 36, 41 and 42. The opposition is based on the
well-known mark ‘ARIA’ in Poland, the United Kingdom and Luxembourg. The
opponent invoked Article 8(2)(c) in conjunction with Article 8(1)(a) and (b) EUTMR.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
Decision on Opposition No B 2 752 866 page: 2 of 5
EARLIER WELL-KNOWN MARK – ARTICLE 8(2)(C) EUTMR IN CONJUNCTION
WITH ARTICLE 8(1)(a) and (b) EUTMR
In its notice of opposition, the opponent claims to have a well-known mark in the
sense of Article 6bis of the Paris Convention for the word mark ‘ARIA’ in Poland, the
United Kingdom and Luxembourg in relation to the following services in Class 36:
Financial affairs; Monetary affairs; Real estate affairs; Factoring; Banking;
Accommodation bureaux [apartments]; Debt collection agencies; Customs
brokerage; Real estate agencies; Financial analysis; Home banking; Guarantees;
Organization of collections; Charitable fund raising; Debt advice; Mutual funds;
Financial consultancy; Stock exchange quotations; Brokerage; Brokerage of carbon
credits; Stock brokerage services; Housing agents; Securities brokerage; Credit
bureaux; Hire-purchase financing; Deposits of valuables; Safe deposit services;
Issue of tokens of value; Issuance of credit cards; Issuing of travellers' checks
[cheques]; Antique appraisal; Art appraisal; Jewelry appraisal; Stamp appraisal;
Financial valuation of standing timber; Financial evaluation of wool; Numismatic
appraisal; Financial evaluation [banking, real estate]; Repair costs evaluation
[financial appraisal]; Real estate appraisal; Leasing of real estate; Fiscal valuations;
Apartment house management; Real estate management; Financial management;
Financial information; Renting of flats; Leasing of farms; Rental of offices [real
estate]; Mortgage banking; Exchanging money; Clearing, financial; Instalment loans;
Financial sponsorship; Fund investments; Pawnbrokerage; Lending against security;
Loans [financing]; Rent collection; Savings bank services; Retirement payment
services; Provident fund services; Credit card services; Debit card services;
Financing services; Business liquidation services, financial; Fiduciary; Electronic
funds transfer; Check [cheque] verification.
According to Article 8(2)(c) EUTMR, for the purposes of Article 8(1) EUTMR ‘earlier
trade marks’ means:
marks which, on the date of application for registration of the EU trade mark,
or, where appropriate, of the priority claimed in respect of the application for
registration of the EU trade mark, are well known in a Member State, in the
sense in which the words ‘well known’ are used in Article 6bis of the Paris
Convention.
Article 8(2)(c) EUTMR, in general, defines the earlier trade mark only ‘for the
purposes of paragraph 1’ and, therefore, does not provide an independent relative
ground for refusal. Thus, the grounds for refusal and opposition are those provided
by Article 8(1) EUTMR.
In order for Article 8(2)(c) EUTMR in conjunction with Article 8(1)(a) and (b) EUTMR
to be applicable, the following has to be established:
a) the earlier mark was well-known in the relevant territory on the date when the
contested EUTM application was filed and
b) Both the signs and the goods or services are identical or because of identity
with or similarity of the contested mark to the earlier well known mark and the
identity or similarity of the goods or services covered by the trade marks,
there exists a likelihood of confusion on the part of the public in the relevant
territory.
Decision on Opposition No B 2 752 866 page: 3 of 5
Well-known character of the earlier trade mark
Reputation implies a knowledge threshold which is reached only when the earlier
mark is known by a significant part of the relevant public for the goods or services it
covers. The relevant public is, depending on the goods or services marketed, either
the public at large or a more specialised public.
In practical terms, the threshold for establishing whether a trade mark is well-known
or enjoys reputation is usually the same.
In the present case the EU was designated in the contested international registration
on 14/03/2016. Therefore, the opponent was required to prove that the trade mark on
which the opposition is based had become well-known in Poland, the United
Kingdom and Luxembourg prior to that date. The evidence must also show that the
well-known character was acquired for the above listed services in Class 36 for which
the opponent has claimed that the mark is well-known.
In order to determine the mark’s level of recognition, all the relevant facts of the case
must be taken into consideration, including, in particular, the market share held by
the trade mark, the intensity, geographical extent and duration of its use, and the size
of the investment made by the undertaking in promoting it.
On 16/08/2016 the opponent submitted the following evidence:
Issuing document of Aria Structured Investments SICAV-SIF dated January
2012. The document specifies that Aria Structured Investments is a
Luxembourg multi-compartment investment company with variable capital
organised as a specialised investment fund in the form of a corporate
partnership limited by Shares.
Document entitled ‘Memorial Journal Officiel du Grand-Duché de
Luxembourg’ dated 13/09/2007. This publication from the Official Journal of
Luxembourg concerns commercial companies and associations. Aria
Structured Investments is listed together with the company’s articles of
association in English and French.
The Opposition Division finds that the evidence submitted by the opponent does not
demonstrate that the earlier trade mark has a well-known character.
The evidence submitted merely concerns the company Aria Structured Investments
SICAV-SIF. The issuing document which gives information on the company and
describes its activities is intended to encourage potential shareholders to invest in the
company whereas the Articles of Association contain the purpose of the company as
well as the duties and responsibilities of its members. There is no information in the
documents submitted referring to actual trade mark awareness and public’s
recognition of the mark in relation to any of the services in Class 36.
Under these circumstances, and in the absence of independent and objective
evidence that would enable solid conclusions to be drawn about the degree of
recognition of the earlier mark by the relevant public in relation to services in
Class 36, the Opposition Division finds that the evidence submitted by the opponent
cannot be conclusive of the well-known character of the mark on its own because it
does not provide information about the actual level of awareness in respect of the
trade mark or the market share held by the mark and is, therefore, clearly not
sufficient to establish all the facts required to safely conclude that the earlier mark is
Decision on Opposition No B 2 752 866 page: 4 of 5
known by a significant part of the public for the relevant services. Therefore, the
Opposition Division concludes that the opponent failed to prove that its trade mark
has a well-known character.
As seen above, it is a requirement for Article 8(2)(c) EUTMR in conjunction with
Article 8(1)(a) and (b) EUTMR to be applicable that the earlier trade mark has
become well-known in the relevant territory on the date when the EU was designated
by the contested IR in relation to the services on which the opposition is based. Since
it has not been established that the earlier trade mark is well-known, one of the
necessary conditions is not fulfilled, and the opposition must be rejected.
COSTS
According to Article 109(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 holder in
the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the
holder are the costs of representation, which are to be fixed on the basis of the
maximum rate set therein.
The Opposition Division
Boyana NAYDENOVA Frédérique SULPICE Adriana VAN ROODEN
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.
Decision on Opposition No B 2 752 866 page: 5 of 5