OPPOSITION No B 2 372 236
SUPRA (Société Anonyme), 28 rue du Général Leclerc, 67210 Obernai, France (opponent), represented by Cabinet Nuss, 10, rue Jacques Kablé, 67080 Strasbourg Cédex, France (professional representative)
a g a i n s t
SF Ltd, Riverside Road, Pottington Industrial Estate, Barnstaple, Devon EX31 1LZ, United Kingdom (applicant), represented by The Trade Marks Bureau, 3rd Floor, 14 Hanover Street, Hanover Square, London W1S 1YH, United Kingdom (professional representative)
On 13/06/2017, the Opposition Division takes the following
1. Opposition No B 2 372 236 is upheld for all the contested goods.
2. European Union trade mark application No 12 576 286 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of European Union trade mark application No 12 576 286. The opposition is based on European Union trade mark registration No 10 066 769. The opponent invoked Article 8(1)(a) and (b) EUTMR.
On 10/10/2016, the applicant filed a limitation request and Class 6 was limited as detailed further below. Classes 11 and 19 were deleted from the specification. The opponent was duly informed and the opposition was maintained. Consequently, the opposition is directed against all the remaining goods in Class 6.
DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR
Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied are identical to the goods or services for which the earlier trade mark is protected.
- The goods
The opposition is based, inter alia, on the following goods:
Class 6: Smoke stacks of metal; parts of chimneys of metal, namely chimney cowls, chimney pots, lengthening pieces for chimneys, chimney plates and chimney shafts (all the aforesaid goods being of metal); heating and ventilation sheaths and pipes of metal; heating and ventilation pipe and sheath muffs and junctions of metal; pillars of metal for buildings; building materials of metal, namely for fireplaces, heaters and hearths; accessories for fireplaces, namely firedogs (andirons).
The contested goods are the following:
Class 6: Chimneys and chimney pots; all the aforesaid goods made wholly or principally of common metal.
Contested goods in Class 6
The contested chimneys made wholly or principally of common metal are included in, or overlap with, the opponent’s smoke stacks of metal. Therefore, they are identical.
The contested chimney pots made wholly or principally of common metal are included in, or overlap with, the opponent’s parts of chimneys of metal, namely chimney pots (all the aforesaid goods being of metal). Therefore, they are identical.
- The signs
Earlier trade mark
The signs are identical.
The signs are identical and all the contested goods are identical. Therefore, the opposition must be upheld in its entirety under Article 8(1)(a) EUTMR.
Since the opposition is fully successful on the basis of the ground of Article 8(1)(a) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(b) EUTMR.
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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and 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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.