OPPOSITION DIVISION
OPPOSITION No B 2 913 039
Kimed S.R.L., Viale Lunigiana, 40, 20125 Milano, Italy (opponent), represented by
Notarbartolo & Gervasi S.P.A., Corso di Porta Vittoria, 9, 20122 Milano, Italy
(professional representative)
a g a i n s t
Markant Services International GmbH, Hanns-Martin-Schleyer-Str. 2, 77656
Offenburg, Germany (holder), represented by Weickmann & Weickmann Patent-
Und Rechtsanwälte PartmbB, Richard-Strauss-Str. 80, 81679 München, Germany
(professional representative).
On 23/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 913 039 is rejected as inadmissible.
2. The opposition fee will not be refunded.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
REASONS
The opponent filed an opposition against all the goods of international registration
designating the European Union No 1 343 602 , namely against all the goods
in Class 5. The opposition is based on European Union trade mark registration
No 15 451 784 . The opponent invoked Article 8(1)(a) and (b) EUTMR.
ADMISSIBILITY
According to Rule 15(2)(b) EUTMIR (in the version in force at the time of filing of the
opposition), the notice of opposition must contain a clear identification of the earlier
mark or earlier right on which the opposition is based, namely:
i) where the opposition is based on an earlier mark within the meaning of Article 8(2)
(a) or (b) EUTMR or where the opposition is based on Article 8(3) EUTMR, an
Decision on Opposition No B 2 913 039 page: 2 of 3
indication of the file number or registration number of the earlier mark, an indication
of whether the earlier mark is registered or an application for registration, as well as
an indication of the Member States including, where applicable, the Benelux, in or for
which the earlier mark is protected, or, if applicable, the indication that it is a
European Union trade mark.
According to Rule 17(2) EUTMIR (in the version in force at the time of filing of the
opposition), if the notice of opposition does not clearly identify the earlier mark on
which the opposition is based in accordance with Rule 15(2)(b) EUTMIR (in the
version in force at the time of filing of the opposition), and if the deficiency has not
been remedied before the expiry of the opposition period, the Office will reject the
opposition as inadmissible.
According to Article 8(1) EUTMR, an opposition can be successful only if it based on
an earlier trade mark. According to Article 8(2)(a) EUTMR, earlier trade marks within
the meaning of Article 8(1) EUTMR are those trade marks with a date of application
for registration which is earlier than the date of application for registration of the
European Union trade mark or a designation of the international registration in
respect of the European Union, taking account, where appropriate, of the priorities
claimed in respect of those trade marks. According to subparagraph (b) of the same
Article, ‘earlier trade marks’ can be applications for the trade marks referred to in
subparagraph (a), subject to their registration.
On 19/06/2017 the opponent filed notice of opposition against the contested
application. The opponent indicated that the basis of the opposition is European
Union trade mark registration No 15 451 784, with the filing date of 19/05/2016.
The contested international registration designating the European Union No 1 343
602 has a priority date of 01/03/2016, which is earlier than the filing date of the
opposing trade mark.
Consequently, the right on which the opposition is based is not earlier within the
meaning of Article 8(2) EUTMR.
The Office informed the opponent of the deficiency in its notification dated
18/09/2017. The opponent was set a time limit of two months, until 18/11/2017, to
submit any comments on the matter. The opponent did not reply within the prescribed
time limit.
The opposition must therefore, be rejected as inadmissible.
COSTS
Please note that the opposition fee will not be refunded. In accordance with
Article 6(5) EUTMDR (former Rule 18(5) EUTMIR, in force before 01/10/2017), the
Office only refunds the opposition fee in the event of a withdrawal and/or restriction of
the trade mark during the cooling-off period.
Decision on Opposition No B 2 913 039 page: 3 of 3
The Opposition Division
Michaela SIMANDLOVA Erkki Münter Marine DARTEYRE
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.