OPPOSITION No B 2 746 801
A N Style Company Limited, 56 Prince George Avenue, London N14 4SP, United Kingdom (opponent), represented by Fletcher Day, 56 Conduit Street Mayfair, London W1S2YZ, United Kingdom (professional representative)
a g a i n s t
Desert Routes General Trading LLC, Boulevard Plaza T2, Unit No 802, 8th Floor, PO Box 413479, Dubai, United Arab Emirates (applicant), represented by Forresters Sherborne House, 119-121 Cannon Street, London EC4N 5AT, United Kingdom (professional representative).
On 13/03/2017, the Opposition Division takes the following
1. Opposition No B 2 746 801 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods of European Union trade mark application No 15 204 399, namely against all the goods in Classes 3, 14 and 25. The opposition is based on United Kingdom trade mark registration No 3 132 826. The opponent invoked Article 8(1)(a) and (b) and 8(5) EUTMR.
Earlier trade mark
According to Rule 17(4) EUTMIR, if the notice of opposition does not comply with the provisions of Rule 15 EUTMIR (other than those referred to in paragraphs 1, 2 and 3 of Rule 17 EUTMIR), the Office shall inform the opponent accordingly and shall invite him to remedy the deficiencies noted within a period of two months. If the deficiencies are not remedied before this time limit expires, the Office shall reject the opposition as inadmissible.
According to Article 8(1) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if, because of its identity or similarity to the earlier right and the identity or similarity of the goods or services covered by the trade marks, there is a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier mark.
According to Article 8(2) EUTMR, for the purpose of paragraph 1, ‘earlier trade marks’ means:
- 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 European Union mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:
- EU trade marks;
- trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property;
- trade marks registered under international arrangements which have effect in a Member States;
- trade marks registered under international arrangements which have effect in the Union.
On 02/08/2016, the opponent filed a notice of opposition against the contested application No 15 204 399.
The opposition is based on United Kingdom trade Mark No 3 132 826, which according to the notice of opposition, was filed on 22/10/2015. The contested trade mark No 15 204 399 has claimed the priority of United Arab Emirates trade mark No 240 280. Therefore, the priority date of the contested trade mark is 13/09/2015. As a consequence, the mark on which the opposition is based is not an earlier right within the meaning of Article 8(2) EUTMR.
The Office informed the opponent of the deficiency in its notification dated 15/08/2016. The opponent was set a time limit of two months, until 20/10/2016, to submit any comments on the matter. On request of the opponent this time limit has been extended until 20/12/2016. However, the Office explicitly pointed out that this deficiency cannot be remedied and that a decision will be taken on the matter after expiry of the set time limit.
The opponent did not reply within the prescribed time limit.
Therefore, the opposition has not been based on an earlier trade mark in the meaning of Article 8 (2) EUTMR as the date of application is later than that of the contested trade mark.
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.
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
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.