OPPOSITION No B 3 133 348

SIC - Sociedade Independente de Comunicação, S.A., Rua Calvet de Magalhães, No. 242, 2770-022 Paco De Arcos, Portugal (opponent), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

Organismo Autónomo Agencia Nacional de Evaluación de la Calidad y Acreditación, C/ Orense 11, 7ª, 28020 Madrid, Spain (applicant), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative).

On 19/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 133 348 is rejected as inadmissible.

2. The opposition fee will not be refunded.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 18 249 100 (figurative mark), namely against all the services in Classes 41 and 42. The opposition is based on European Union trade mark registration No 18 248 993  (figurative mark). The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

ADMISSIBILITY

According to Article 8(1) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

(a) if it is identical with the earlier trademark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected;

(b) if, because of its identity with, or similarity to, the earlier trademark and the identity or similarity of the goods or services covered by the trademarks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

According to Article 8(2) EUTMR, for the purposes of Article 8(1) EUTMR, ‘earlier trade marks’ are those trademarks with a date of application for registration which is earlier than the date of application for registration of the European Union trade mark, taking account, where appropriate, of the priorities claimed in respect of those trademarks. According to point (b) of the same Article, ‘earlier trade marks’ can be applications for the trademarks referred to in point (a), subject to their registration.

In the present case the filing date of the contested European Union trade mark application No 18 249 100 is 04/06/2020. According to the opposition notice, filed on 26/10/2020, the filing date of the trade mark on which the opposition is based, namely European Union trade mark registration No 18 248 993, is also 04/06/2020, i.e. the same date. No priorities have been claimed for any of the two concerned trade marks. For an invoked right to be earlier it must have, in the absence of any priority, an application date that is prior to the day on which the contested EUTM application was filed or where appropriate, prior to the claimed priority in respect of the contested EUTM application. In the case of conflict between a national mark and an EUTM application, the hour and the minute of filing of the national mark is not relevant for determining which mark is earlier (22/03/2012, C-190/10, Rizo, EU:C:2012:157). Accordingly, the filing date of the trade mark on which the opposition is based is not earlier than that of the contested application.

The Office informed the opponent of the deficiency in its notification dated 18/11/2020. The opponent was set a time limit of two months, until 23/01/2021, to submit any comments on the matter. The opponent did not reply within the prescribed time limit.

Consequently, European Union trade mark registration No 18 248 993 on which the opposition is based is not earlier within the meaning of Article 8(2) EUTMR and the opposition must 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

Dzintra BRAMBATE

Hanne Kirsten THOMSEN

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.