OPPOSITION Nо B 2 953 357

 

Omnicom International Holdings Inc, 720 California Street, 94108 San Francisco, California, United States of America (opponent), represented by Lewis Silkin Ireland, 26 Lower Baggot Street, Dublin 2, Ireland (professional representative) 

 

a g a i n s t

 

Edvard Tomaševskij, Rinktinės G. 13 - 93, 09201 Vilnius, Lithuania (applicant), represented by Metida Law Firm Zaboliene and Partners, Business Center Vertas Gynéjų Str. 16, 01109 Vilnius, Lithuania (professional representative).

On 13/01/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 2 953 357 is rejected in its entirety.

 

2.	The opponent bears the costs, fixed at EUR 300.

 

REASONS

 

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 075 409 (figurative mark), namely against all the services in Class 35 and some services in Classes 40, 41, 42 and 45. The opposition is based on European Union trade mark registration No 7 296 502 OMG (word mark). The opponent invoked Article 8(1)(a) and (b) EUTMR and Article 8(5) EUTMR.

 

 

PROOF OF USE

 

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

 

The same provision states that, in the absence of such proof, the opposition will be rejected.

 

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.

 

The request was filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

 

On 22/05/2020 the opponent was given two months to file the requested proof of use, that is, on or before 27/07/2020. This time limit was then extended further upon the request of the opponent until 27/09/2020.

 

The opponent did not submit any evidence concerning the use of the earlier trade mark on which the opposition is based within the given time limit, nor did it argue that there were proper reasons for non-use.

  

According to Article 10(2) EUTMDR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition.

 

Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR. 

 

COSTS

 

According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) 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

 

 

Nicole CLARKE

Christophe DU JARDIN

Erkki MÜNTER

 

 

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.