OPPOSITION Nо B 3 116 529

 

Concesiones y Bebidas Carbonicas, S.A., C/ Ramón Berenguer IV, nº 1, 50007 Zaragoza, Spain (opponent), represented by Polopatent, Dr. Fleming, 16, 28036 Madrid, Spain (professional representative) 

 

a g a i n s t

 

The Coca-Cola Company, One Coca-Cola Plaza, 30313 Atlanta, United States of America (applicant), represented by Allen & Overy LLP, One Bishops Square, E1 6AD London, United Kingdom (professional representative).

On 04/12/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 116 529 is rejected as inadmissible.

 

2.	The opposition fee will not be refunded.

 

REASONS

 

The opponent filed an opposition against all the goods in Class 32 of European Union trade mark application No 18 171 415 ‘KAWAI’ (word mark). The opposition is based on Spanish trade mark registration No M 403 8542 (figurative mark). The opponent invoked  Article 8(1)(b) EUTMR.

 

 

ADMISSIBILITY – ABSOLUTE REQUIREMENTS – EARLIER RIGHT NOT EARLIER

 

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:

a) by the proprietors of earlier trade marks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and 8(5);

[…].

According to Article 8(2) EUTMR, for the purposes of Article 8(1) EUTMR, ‘earlier trade marks’ are those trade marks with a date of application for registration which is earlier than the date of application for registration of the (contested) European Union trade 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 case at hand, the relevant dates are as follows:

The filing date of the contested European Union trade mark application No 18 171 415 is 24/12/2019. However, it has an accepted priority claim for Azerbaijan trade mark registration No 2019 01176 of 25/06/2019. The Opposition Division has established that the substantive requirements for the validity of the priority claim are satisfied.

Thus, the filing date of any earlier right on which the present opposition is based must be prior to the 25/06/2019.

The filing date of the opponent’s Spanish trade mark registration No M 403 8542 is 11/10/2019 and no priority has been claimed.

Therefore, the filing date of the opponent’s Spanish trade mark registration No M 403 8542, on which the opposition is based, is not in fact earlier than the priority date of the contested EUTM application. Consequently, the Spanish trade mark registration No M 403 8542 cannot be considered as an earlier right within the meaning of Article 8(2) EUTMR.

 

The Office informed the opponent of the deficiency in its notification dated 18/08/2020. The opponent was set a time limit until 23/10/2020 to submit any comments on the matter.

The opponent did not reply within the prescribed time limit.

The opposition must therefore, 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

 

 

Monika CISZEWSKA

Reet ESCRIBANO

Maria José LOPEZ BASSETS

 

 

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.