OPPOSITION No B 2 407 503
BodyHelix, LLC, 5200 Davis Mill Road, 27406 Greensboro, United States of America (opponent), represented by Swindell & Pearson LTD, 48 Friar Gate, DE1 1GY Derby, United Kingdom (professional representative)
a g a i n s t
Bodyhelix Limited, 8 Park Close, IM4 4HB Glen Vine, Isle Of Man (applicant), represented by Trade Mark Direct, 4 The Mews, Bridge Road, TW1 1RF Twickenham, London, United Kingdom (professional representative).
On 28/01/2020, the Opposition Division takes the following
Union trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against all the goods of European Union
trade mark application No
United Kingdom non-registered trade mark for the word mark ‘BODYHELIX’, for which the opponent invoked Article 8(4) EUTMR,
USA trade mark registration No 4 187 249 for the word mark ‘BODYHELIX’, for which the opponent invoked Article 8(3) EUTMR,
DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR
The opposition is based on more than one earlier right. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 12 649 331 for which the opponent invoked, inter alia, Article 8(1)(a).
Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.
The goods on which the opposition is based are the following:
Class 28: Body part compression sleeves and wraps for use in sports.
The contested goods are the following:
Class 28: Protective supports for joints and muscles [sports articles]; compression sleeves and wraps for use in sports.
The contested goods are identical to the opponent’s goods either because they are identically contained in both lists (including synonyms) or because they include as broader categories, the opponent’s goods.
Earlier trade mark
The signs are identical.
Global assessment, other arguments and conclusion
The goods are identical and the signs are identical. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR since the requirement of identity between the signs and identity between the goods is fulfilled.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 649 331. It follows that the contested trade mark must be rejected in its entirety.
Since the opposition is fully successful on the basis of the ground of Article 8(1)(a) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(b) EUTMR.
As the earlier right European Union trade mark registration No 12 649 331 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights and grounds invoked by the opponent (16/09/2004, T 342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
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.