OPPOSITION DIVISION

OPPOSITION No B 2 752 866

Aria structured Investments, 25A bld Royal, 2449 Luxembourg, Luxembourg

(opponent), represented by Aria structured Investments, Christian Denizon, 25A

bld Royal, 2449 Luxembourg, Luxembourg (employee representative)

a g a i n s t

Aria Systems Inc., 575 Market Street, 32nd Floor, San Francisco, California, 94105

United States (of America) (holder), represented by Cooley (UK) LLP, Dashwood 69,

REASONS

The opponent filed an opposition against all the services of international registration

designating the European Union No 1 297 163 , namely

against all the services in Classes 35, 36, 41 and 42. The opposition is based on the

well-known mark ‘ARIA’ in Poland, the United Kingdom and Luxembourg. The

opponent invoked Article 8(2)(c) in conjunction with Article 8(1)(a) and (b) EUTMR.

PRELIMINARY REMARK

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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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)

WITH ARTICLE 8(1)(a) and (b) EUTMR

In its notice of opposition, the opponent claims to have a well-known mark in the

sense of Article 6bis of the Paris Convention for the word mark ‘ARIA’ in Poland, the

United Kingdom and Luxembourg in relation to the following services in Class 36:

Financial affairs; Monetary affairs; Real estate affairs; Factoring; Banking;

Accommodation bureaux [apartments]; Debt collection agencies; Customs

brokerage; Real estate agencies; Financial analysis; Home banking; Guarantees;

Organization of collections; Charitable fund raising; Debt advice; Mutual funds;

Financial consultancy; Stock exchange quotations; Brokerage; Brokerage of carbon

credits; Stock brokerage services; Housing agents; Securities brokerage; Credit

Apartment house management; Real estate management; Financial management;

Financial information; Renting of flats; Leasing of farms; Rental of offices [real

estate]; Mortgage banking; Exchanging money; Clearing, financial; Instalment loans;

Financial sponsorship; Fund investments; Pawnbrokerage; Lending against security;

Loans [financing]; Rent collection; Savings bank services; Retirement payment

services; Provident fund services; Credit card services; Debit card services;

Financing services; Business liquidation services, financial; Fiduciary; Electronic

funds transfer; Check [cheque] verification.

According to Article 8(2)(c) EUTMR, for the purposes of Article 8(1) EUTMR ‘earlier

trade marks’ means:

purposes of paragraph 1’ and, therefore, does not provide an independent relative

ground for refusal. Thus, the grounds for refusal and opposition are those provided

by Article 8(1) EUTMR.

In order for Article 8(2)(c) EUTMR in conjunction with Article 8(1)(a) and (b) EUTMR

to be applicable, the following has to be established:

a) the earlier mark was well-known in the relevant territory on the date when the

contested EUTM application was filed and

b) Both the signs and the goods or services are identical or because of identity

with or similarity of the contested mark to the earlier well known mark and the

identity or similarity of the goods or services covered by the trade marks,

mark is known by a significant part of the relevant public for the goods or services it

covers. The relevant public is, depending on the goods or services marketed, either

the public at large or a more specialised public.

In practical terms, the threshold for establishing whether a trade mark is well-known

or enjoys reputation is usually the same.

In the present case the EU was designated in the contested international registration

on 14/03/2016. Therefore, the opponent was required to prove that the trade mark on

must be taken into consideration, including, in particular, the market share held by

the trade mark, the intensity, geographical extent and duration of its use, and the size

of the investment made by the undertaking in promoting it.

On 16/08/2016 the opponent submitted the following evidence:

 Issuing document of Aria Structured Investments SICAV-SIF dated January

partnership limited by Shares.

 Document entitled ‘Memorial Journal Officiel du Grand-Duché de

Luxembourg’ dated 13/09/2007. This publication from the Official Journal of

Luxembourg concerns commercial companies and associations. Aria

Structured Investments is listed together with the company’s articles of

association in English and French.

The Opposition Division finds that the evidence submitted by the opponent does not

demonstrate that the earlier trade mark has a well-known character.

The evidence submitted merely concerns the company Aria Structured Investments

SICAV-SIF. The issuing document which gives information on the company and

evidence that would enable solid conclusions to be drawn about the degree of

recognition of the earlier mark by the relevant public in relation to services in

Class 36, the Opposition Division finds that the evidence submitted by the opponent

cannot be conclusive of the well-known character of the mark on its own because it

does not provide information about the actual level of awareness in respect of the

trade mark or the market share held by the mark and is, therefore, clearly not

sufficient to establish all the facts required to safely conclude that the earlier mark is

Opposition Division concludes that the opponent failed to prove that its trade mark

As seen above, it is a requirement for Article 8(2)(c) EUTMR in conjunction with

Article 8(1)(a) and (b) EUTMR to be applicable that the earlier trade mark has

become well-known in the relevant territory on the date when the EU was designated

by the contested IR in relation to the services on which the opposition is based. Since

it has not been established that the earlier trade mark is well-known, one of the

necessary conditions is not fulfilled, and the opposition must be rejected.

Since the opponent is the losing party, it must bear the costs incurred by the holder in

the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)

and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the

holder are the costs of representation, which are to be fixed on the basis of the

maximum rate set therein.

deemed to have been 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 Article 109(8) EUTMR

(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be

filed within one month of the date of notification of this fixation of costs and will be

deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)

EUTMR) has been paid.