OPPOSITION Nо B 3 089 230

 

Guangzhou Duoyi Electronics Co., Ltd, 2/F,7A,Jinshan Industry Park Jinshan Avenue Nancun, Panyu, 511442 Guangzhou, GD, People’s Republic of China (opponent), represented by Carolina María Sánchez Margareto, C/ Sueca, 22, 4º, pta 12, 46006 Valencia, Spain (professional representative) 

 

a g a i n s t

 

Shenzhen Jin Cheng Run Trade Development Co., Ltd, 801, F/8, Mangguo Network Bldg., Technology Park S., Yuehai Sub-dist., Nanshan Dist., 518000 Shenzhen, People’s Republic China (applicant), represented by Marinos Cleanthous, 8 Victor Hugo, 2107 Nicosia, Cyprus (professional representative).

On 23/12/2020, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 089 230 is rejected as inadmissible.

 

2.	The opposition fee will not be refunded.

 

REASONS

 

The opponent filed an opposition against all the goods of European Union trade mark application No 18 050 304 for the work mark ‘DUOYI’. The opposition is based on the non-registered trade mark ‘DUOYI’ used in the course of trade in the European Union. The opponent invoked Article 8(4) EUTMR.

 

  

ADMISSIBILITY

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:

[…]

(c) by the proprietors of earlier marks or signs referred to in Article 8(4) and by persons authorised under the relevant national law to exercise these rights;

[…].

According to Article 2(2)(b) EUTMDR, the notice of opposition must contain a clear identification of the earlier mark or earlier right on which the opposition is based, namely:

 

iv) where the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, an indication of its kind or nature, a representation of the earlier right, and an indication of whether this earlier right exists in the whole Union or in one or more Member States, and if so, an indication of the Member States.

 

According to Article 5(3) EUTMDR, if the notice of opposition does not clearly identify the earlier mark or the earlier right on which the opposition is based in accordance with Article 2(2)(b) EUTMDR, and if the deficiency has not been remedied before the expiry of the opposition period, the Office will reject the opposition as inadmissible.

 

On 17/07/2019, the opponent filed notice of opposition against the contested application.

The opponent invoked under the grounds of Article 8(4) EUTM an EU non-registered trade mark ‘DUOYI’.

The Opposition Division notes that non-registered trade marks are not harmonised at EU level and these rights are completely governed by national laws. Consequently, an EU non registered trade mark as such does not exist and it is only at Member State level that such rights can form a valid basis for opposition under these grounds. Consequently, such a right is not an eligible basis for opposition under Article 8(4) EUTMR.

The Opposition Division deems it necessary to point out that in case the opponent´s intention was to invoke the non-registered trade mark in one or more of the EU Member States, it should have specified the Member States where the earlier right exists (an absolute admissibility requirement provided for in Article 2(2)(b)(iv) EUTMDR under Article 8(4) EUTMR). However, the opponent failed to indicate the Member State(s) where the right is claimed to exist.

On 29/01/2020 the opponent requested on the basis of Article 5(5) EUTMDR a two month time period to remedy the admissibility deficiency since, according to the opponent, it was attributable to a human typing mistake. According to Article 5(5) EUTMDR, ‘where the notice of opposition does not comply with the provisions of Article 2(2)(d) to (h), the Office shall inform the opposing party accordingly and shall invite it to remedy the deficiencies noted within a period of two months. If the deficiencies are not remedied before the time limit expires, the Office shall reject the opposition as inadmissible.’ Therefore, the two month time limit foreseen in Article 5(5) EUTMDR is applicable to the relative admissibility deficiencies which are those that can be remedied after expiry of the opposition. However, in the present case, the deficiency concerns the indication of the Member State where the right is claimed to exist. This is an absolute admissibility requirement provided for in Article 2(2)(b)(iv) EUTMDR which could have only been remedied on the opponent’s initiative during the 3 month opposition period (in the present case opposition period ended on 18/07/2019). Therefore, the opponent’s request to remedy the deficiency on the basis of Article 5(5) EUTMDR cannot be granted.

Furthermore, on 28/08/2020 the opponent made a reference to its submissions of 10/12/2019 which contained documents concerning its UK trade mark registration No 3 414 911 and EUTM trade mark No 18 084 591 and argued that EUTM trade mark No 18 084 591 proceeded to registration on ‘October 10th’. However, these trade mark registrations were not invoked as earlier rights in the notice of opposition within the opposition period and therefore they cannot be taken into account as the basis of the opposition. Moreover, the filing date of the contested EUTM is 11/04/2019 whereas the filing date of UK trade mark registration No 3 414 911 is 18/07/2019 (no priority claimed) and the filing date of the EUTM No 18 084 591 is 20/06/2019 (no priority claimed). Therefore, these aforementioned trade marks are not earlier than the contested EUTM application. The opposition would have been inadmissible even if opponent had invoked them as the basis of the opposition within the opposition period.

Consequently, the opposition based on the non-registered EU trade mark is to be rejected as inadmissible.

  

Please note that the opposition fee will not be refunded. In accordance with Article 6(5) EUTMDR, 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.

 

 

 

 

The Opposition Division

 

 

Biruté SATAITE-GONZALEZ

Marcel DOLIESLAGER

Maria INFANTE SECO DE HERRERA

 

 

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.