OPPOSITION Nо B 3 112 097

 

Telconn Intelligent Technology (Shenzhen) Co. Ltd, 301C, Bldg 41A, Huaide Cuigang Industrial Park, Fuyong Street, Bao'an District, Shenzhen, People’s Republic of China and Telconn Communication Technologies Co., Ltd, Room 1210, Waysoncomm. Bldg No. 28 Connaught Rd. W., Sheung Wan, Hong Kong Special Administrative Region of the People's Republic of China (opponents), represented by Balder IP Law, S.L., Paseo de la Castellana 93, 28046 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Igoteck Europe S.L.U., Calle Leganitos 47, 7, 28013 Madrid, Spain (applicant), represented by Inlex IP Expertise, Plaza San Cristobal, 14, 03002 Alicante, Spain (professional representative).

On 29/04/2021, the Opposition Division takes the following

 

 

DECISION:

 

1. Opposition No B 3 112 097 is rejected in its entirety.

2. The opponents bear the costs, fixed at EUR 300.

 

REASONS

 

The opponents filed an opposition against all the goods of European Union trade mark application No 18 162 213 (figurative mark), namely all the goods in Class 9. The opposition is based on Egyptian trade mark registration No 354 797 . The opponents invoked  Article 8(3) EUTMR.

 

ADMISSIBILITY

The opposition has been filed in the name of two opponents, notably Telconn Intelligent Technology (Shenzhen) Co. Ltd and Telconn Communication Technologies Co., Ltd.

On 27/05/2020, the Office informed the opponents that the right to file an opposition jointly with other opponents applies only in those cases where the opponents have a certain relationship, namely:

 that they are co-owners of the earlier right(s) on which the opposition is based, or

 that the opposition is filed by the owner or co-owner of an earlier mark or right, together with one or more licensees of these earlier marks/rights.

Since the notice of opposition did not indicate the relationship of the opponents (co-ownership or owner/licensee), there was no indication that the multiple opponents fulfil one of these two requirements. Consequently, the opponents were invited to remedy this deficiency by 01/08/2020 by either:

a) clearly indicating that the opponents are co-owners or owner/co-owner and licensee of the earlier right(s) on which the opposition is based (this information must be provided in relation to each of the earlier rights); or

b) if this is not the case, appointing one opponent from among those listed.

On 24/07/2020, the opponents replied that Telconn Communication Technologies, Co. is the licensee of Telconn Intelligent Technology (Shenzhen) Co. Ltd.

However, according to Article 46(1)(b) EUTMR, the right to file an opposition on the grounds of Article 8(3) EUTMR is reserved only for the proprietors of earlier trade marks. This is in contrast both to Article 46(1)(a) EUTMR, which stipulates that oppositions based on Articles 8(1) or (5) EUTMR may also be filed by authorised licensees, and to Article 46(1)(c) EUTMR, which stipulates that for oppositions based on Article 8(4) EUTMR, the right to file an opposition is also extended to persons authorised by national law to exercise the relevant rights.

It follows that since the right to oppose an EUTM application on the grounds of Article 8(3) EUTMR belongs exclusively to the proprietors of earlier trade marks, oppositions filed in the name of third persons, be they licensees or otherwise authorised by the relevant national laws, will be dismissed as inadmissible due to lack of entitlement.

From the trade mark certificate filed in order to substantiate the opposition it can be seen that the proprietor of the trade mark on which the opposition is based is Telconn Intelligent technology (Shenzhen) Co., Ltd.

Consequently, the opposition must be rejected as inadmissible insofar as it has been filed in the name of Telconn Communication Technologies Co., Ltd which, according to the opponents’ submissions, is the licensee of the earlier trade mark’s proprietor.

The examination of the opposition will proceed with Telconn Intelligent technology (Shenzhen) Co., Ltd as the opponent.

UNAUTHORISED FILING BY AN AGENT OR REPRESENTATIVE OF THE TRADE MARK OWNER — ARTICLE 8(3) EUTMR

 

According to Article 8(3) EUTMR, upon opposition by the proprietor of the trade mark, a trade mark will not be registered where an agent or a representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action.

 

Therefore, the grounds for refusal of Article 8(3) EUTMR are subject to the following requirements:

 

 the signs are identical or only differ in elements that do not substantially affect their distinctiveness; 

 the goods and services are identical or equivalent in commercial terms; 

 the applicant is an agent or a representative of the owner of the earlier mark; 

 the application was filed without the consent of the owner of the earlier mark; 

 the agent or representative fails to justify its acts. 

These conditions are cumulative. Therefore, where one of the conditions is not satisfied, the opposition based on Article 8(3) EUTMR cannot succeed.

a)  Agent or representative relationship

The opponent has filed a distribution agreement concluded between Telconn Communication Technologies Co., Ltd and Igoteck Europe S.L.U. on 22/11/2019, by means of which the EUTM applicant agrees to carry out sales activities in Spain as a distributor of Telconn Communication Technologies Co., Ltd.

The Opposition Division notes that Telconn Communication Technologies Co., Ltd is not the owner of the earlier mark, as stated above in the section on ‘ADMISSIBILITY’.

Therefore, the opponent has failed to prove that the applicant is an agent or a representative of the owner of the earlier mark.

b) Conclusion

As one of the abovementioned cumulative conditions for the application of Article 8(3) EUTMR is not satisfied, the opposition filed by Telconn Intelligent Technology (Shenzhen) Co. Ltd must be rejected as unfounded.

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 opponents are the losing party, they 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

 

Carmen SÁNCHEZ PALOMARES

Natascha GALPERIN

María Belén IBARRA DE DIEGO

 

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.