OPPOSITION Nо B 3 130 948

 

Mind (The National Association for Mental Health), Granta House 15/19 Broadway, E15 4BQ Stratford, United Kingdom (opponent), represented by Joanne Claire Lazenby, 28 Mornington Terrace, NW1 7RS London, United Kingdom (professional representative)

a g a i n s t

Koa Health B.V., Prins Bernhardplein 200, 1097 JV Amsterdam, Netherlands (applicant), represented by Intecser Consultoría, Calle Goya, 127, 28009 Madrid, Spain (professional representative).

On 31/03/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 130 948 is rejected in its entirety.

 

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

 

REASONS

 

On 15/09/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 247 916 (figurative mark), all in Class 9. The opposition is based on the following earlier rights:

1. United Kingdom trade mark registration No 2 602 931, ;

2. United Kingdom trade mark registration No 3 413 795, RAINBOWMIND;

3. United Kingdom trade mark registration No 2 061 348, MIND;

4. United Kingdom trade mark registration No 23 640 40A, ;

5. United Kingdom trade mark registration No 23 640 40B, ;

6. United Kingdom trade mark registration No 3 267 170, Mind Infoline, Mind InfoLine, Mind Legal Line;

7. United Kingdom non-registered trade marks , RAINBOWMIND, MIND, , ;

8. well-known trade marks in Ireland , RAINBOWMIND, MIND, , and Mind Infoline, Mind InfoLine, Mind Legal Line.

The opponent invoked Article 8(1)(b), 8(4) and 8(5) EUTMR.

 

EARLIER UK RIGHTS

 

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), 8(4) and 8(5) EUTMR, worded in the present tense, must also be fulfilled at the time of decision taking. It follows that United Kingdom trade mark registrations 1 to 6 listed above and the United Kingdom non-registered marks listed under 7 no longer constitute a valid basis of the opposition.

The opposition must therefore be rejected as far as it is based on these earlier rights and the grounds under Article 8(1), 8(4) and 8(5) EUTMR.

 

SUBSTANTIATION – Earlier well-known trade marks in Ireland under Article 8(2)(c) EUTMR

 

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

 

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

 

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

 

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

 

In particular, if the opposition is based on a well-known mark within the meaning of Article 8(2)(c) EUTMR, the opposing party must submit evidence showing that this mark is well known in the relevant territory for the goods and services on which the opposition is based - Article 7(2)(b) EUTMDR.

 

Article 8(2)(c) EUTMR, in general, defines the earlier trade marks only ‘for the purposes of paragraph 1’ and, therefore, does not provide an independent relative ground for refusal. Therefore, the grounds for refusal and opposition are those provided by Article 8(1) EUTMR.

In order for Article 8(2)(c) EUTMR in conjunction with Article 8(1) EUTMR to be applicable, the following has to be established:

 the earlier marks were well-known in the relevant territory on the date when the contested EUTM application was filed

and, in conjunction with Article 8(1)(a) EUTMR:

 there is an identity between the contested mark and the earlier well-known marks, and an identity of the goods or services covered by the trade marks,

or in conjunction with Article 8(1)(b) EUTMR:

 there is an identity or similarity between the contested mark and the earlier well-known marks, and an identity or similarity of the goods or services covered by the trade marks, and there exists a likelihood of confusion on the part of the public in the relevant territory.

These conditions are cumulative. Therefore, where a mark does not satisfy one of these conditions, the opposition based on the well-known trade marks under Article 8(1)(a) and (b) EUTMR in conjunction with Article 8(2)(c) EUTMR cannot succeed.

In the present case, the notice of opposition was not accompanied by any evidence as regards the earlier well-known trade marks in Ireland on which the opposition is based, which have been listed above. All the arguments submitted by the opponent are related to the United Kingdom and the protection of earlier marks in this territory.

 

On 23/10/2020, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 27/02/2020.

 

The opponent did not submit any evidence concerning the validity and scope of protection of the earlier trade marks in Ireland.

 

According to Article 8(1) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not submitted any evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, or where the evidence submitted is manifestly irrelevant or manifestly insufficient, the opposition will be rejected as unfounded.

 

The opposition must therefore be rejected as unfounded, as far as it is based on these well-known trade marks.

 

 

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

 

 

Claudia SCHLIE

Begoña URIARTE VALIENTE

Martina GALLE

 

 

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.