OPPOSITION No B 3 117 994

Zamir Hussain, 283 Barking Road, London E13 8EQ, United Kingdom (opponent), represented by Sandra Santos Rodríguez, Alameda San Mamés 43 bis, 3 - 1, 48010, Bilbao (Bizkaia), Spain (professional representative)

a g a i n s t

Jatinder Singh Wasu, Sterling Hay Suite, 100 Pall Mall, London SW1Y 5HP, United Kingdom (applicant), represented by Appleyard Lees IP LLP, 15 Clare Road, Halifax, West Yorkshire HX1 2HY, United Kingdom (professional representative).

On 29/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 117 994 is rejected in its entirety.

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

REASONS

On 02/05/2020, the opponent filed an opposition against all the goods and services (Classes 30, 39 and 43) of European Union trade mark application No 17 965 620 (figurative mark). The opposition is based on European Union trade mark registration No 18 226 977 and a non-registered sign (United Kingdom), both for the figurative sign . The opponent invoked Articles 8(1)(a), 8(1)(b) and 8(5) EUTMR in relation to the EU trade mark registration No 18 226 977 and Article 8(4) EUTMR in relation to the non-registered sign in the United Kingdom.

INVOKED EU TRADE MARK

According to Article 46(1)(a) EUTMR, within a period of three months following the publication of an EUTM application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8 EUTMR by the proprietors of earlier trade marks referred to in Article 8(2) EUTMR as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and 8(5) EUTMR.

According to Article 8(2) EUTMR, for the purposes of Article 8(1) EUTMR, ‘earlier trade marks’ means trade marks with a date of application for registration which is earlier than the date of application for registration of the contested mark, 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.

Therefore, the legal basis of the opposition requires the existence and validity of an earlier right within the meaning of Article 8(2) EUTMR.

In the present case, the filing date of European Union trade mark application is 08/10/2018. In addition, there is a valid priority claim from an UK trade mark No 3 306 679 with the filing date 26/04/2018.

The filing date of the opponent’s EU trade mark registration No 18 226 977 is 18/04/2020. Albeit the opponent indicated in the opposition notice a priority date 13/02/2010 in relation to this mark, the Opposition Division notes that this is not a valid priority claim. In accordance with the Article 35 EUTMR priority claims shall be filed together with the EU trade mark application and shall include the date, number and country of the previous application. The documentation in support of priority claims shall be filed within three months of the filing date. Moreover, as the Article 34 EUTMR states a priority claim can be made only when the EU trade mark application was filed no later than 6 months following the date of filing of the earlier application. In the present case, the application for the opponent’s EUTM has not been accompanied by any priority claim. The EU trade mark application was not filed within 6 month. In addition, the opponent did not submit documents in support of a priority claim at any stage of the proceedings.

Since the filing date of the opponent’s trade mark is not earlier than the filing date of the contested sign, it cannot constitute a valid earlier right within the meaning of Article 8(2) EUTMR.

Therefore, the opposition must be rejected as unfounded insofar as it is based on EU trade mark registration No 18 226 977.

INVOKED UK RIGHT

On 01/02/2020, the United Kingdom (UK) withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(1), (4) and (5) EUTMR, worded in the present tense, must also be fulfilled at the time of decision taking. It follows that the earlier unregistered right , insofar as it claims protection in the United Kingdom, is, as of 01/01/2021, no longer valid earlier right on which an opposition can be based. This interpretation is in line with Communication No 2/20 of the Executive Director of the Office of 10/09/2020 on the impact of the United Kingdom’s withdrawal from the European Union on certain aspects of the practice of the Office (‘the Communication’), according to which the UK rights cease ex lege to be ‘earlier rights’ for the purposes of inter partes proceedings (i.a. opposition) as from 01/01/2021. The Communication also clarifies that ‘regardless of their procedural status at first instance, actions in inter partes proceedings based on UK rights that are still pending on 01/01/2021will be dismissed for lack of valid basis’.

 

Therefore, the opposition must be rejected also as far as it is based on this earlier right, since it lacks a valid basis.

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 (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Claudia MARTINI

Renata COTTRELL

Marta ALEKSANDROWICZ-STANLEY

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.