OPPOSITION No B 2 664 186

Kotak Mahindra Bank Ltd., Kotak Infiniti,5th Floor, Bldg.No.21, Infinity Park, Off., Western Express Highway, General AK Vaidya, Marg, Malad (East), Mumbai, Maharashtra 400 097, India (opponent), represented by Isern Patentes Y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Kotak LLC, PO Box 572140, Tarzana California 91357, United States of America (applicant), represented by Lewis Silkin LLP, 5 Chancery Lane, Clifford's Inn, London  EC4A 1BL, United Kingdom (professional representative).

On 25/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 664 186 is rejected as inadmissible.

2.        The opposition fee will not be refunded.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 782 122, namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 14 483 382. The opponent invoked Article 8(1)(b) EUTMR.

KOTAK	KOTAK
Earlier trade mark	Contested sign

DECISION ON THE REVOCATION

Where the Office has made an entry in the Register or taken a decision that contains an obvious procedural error attributable to the Office, it shall ensure that the entry is cancelled or the decision is revoked.

On 07/03/2016, the Office informed the parties in the present proceedings that the opposition was found admissible, at least insofar it was based on earlier European Union trade mark registration No 14 483 382.

On 29/07/2016, the Opposition Division informed the parties that it intended to revoke its decision on the admissibility of the opposition. The reason is that the proceedings that led to this decision contained an obvious procedural error attributable to the Office, namely that it overlooked the fact that the basis of the opposition is not an earlier right. The opponent’s mark, European trade mark registration No 14 483 382 has a filing date of 20/08/2015, whereas the opposed application, EUTM No 14 782 122 has a priority date of 17/06/2015.

The decision of admissibility adopted by the Opposition Division in opposition No B 2 664 186 is herewith revoked and replaced with the present decision.

ADMISSIBILITY

The Office informed the opponent of the deficiency in its notification dated 29/07/2016. In this communication, the Office informed the opponent that the notice of opposition had been found inadmissible, because the mark on which the opposition had been based was not actually an earlier right within the meaning of Article 8(2) EUTMR.

According to Article 8(2) EUTMR, ‘earlier trade mark’ means:

(a)         trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the EU trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:

1. EU trade marks;
2. trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property;
3. trade marks registered under international arrangements which have effect in a member State;
4. trade marks registered under international arrangements which have effect in the Union;

(b)        applications for the trade marks referred to in subparagraph a), subject to their registration;

(c)         trade 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.

In the case in question, the relevant dates are as follows:

• The filing date of the contested European Union trade mark application is 11/11/2015. The priority date claimed and accepted by the Office for this application is 17/06/2015.

• The filing date of the opponent’s European Union trade mark No 14 483 382 is 20/08/2015, namely after the priority date granted to the contested European Union trade mark application No 14 782 122.

The opponent was informed of the deficiency and was set a time limit to submit any comments on the matter.

On 05/09/2016, the opponent informed the Office that it disputed the revocation of the decision on the admissibility of the opposition, claiming that it has superior rights to the mark ‘KOTAK’ both on account of its previous registrations and also on account of its use of both the marks ‘KOTAK’ and ‘KOTAK MAHINDRA’.

However, the priority right was correctly granted to the applicant and the opposition was only based on the registered European Union trade mark No 14 483 382 and on the ground 8(1)(b) EUTMR.

Accordingly, the sole mark on which the opposition is based does not qualify as an ‘earlier trade mark’ within the meaning of Article 8(2)(a) EUTMR.

The opposition must, therefore, be rejected as inadmissible.

Please note that 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

Lena FRANKENBERG GLANTZ

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.