OPPOSITION No B 2 710 252
Sovereign Military Hospitaller Order of St. John of Jerusalem of Rhodes and of Malta, Via Condotti 68, 00187 Rome, Italy (opponent), represented by Keesom & Hendriks N.V., Delistraat 45, 2585 VX Den Haag, Netherlands (professional representative)
a g a i n s t
Sovereign Order of Saint John of Jerusalem, – Knights of Malta, – The International Grand Priory, 66, Sir Patrick Stuart Street, Gzira GZR 1050, Malta (applicant), represented by Advocates Chetcuti Cauchi, Law Firm, Britannia House, Melita Street, Valletta VLT 12, Malta (professional representative).
On 10/01/2018, the Opposition Division takes the following
1. Opposition No B 2 710 252 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 168 347 for the figurative mark . The opposition is based on European Union trade mark registrations No 3 983 129 for the figurative mark and No 10 681 047 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR in relation to both earlier marks and also Article 8(5) EUTMR in relation to earlier European Union trade mark registration No 3 983 129.
REPUTATION — ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.
- The signs must be either identical or similar.
- The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.
- Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08 & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.
In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.
- The signs