OPPOSITION No B 2 614 827

Impact Developer & Contractor S.A., sos. Bucuresti Ploiesti nr. 172-176, Willbrook Platinum, cladirea A, et. 1, Sector 1., oras Bucuresti, Romania (opponent)

a g a i n s t

Baldwin Americas Corporation, 3041 Woodcreek Drive, Suite 102, Downers Grove, Illinois, United States of America (applicant), represented by LS-IP Loth & Spuhler Intellectual Property Law Partnerschaft von Rechtsanwälten mbB, Alpha-Haus, Garmischer Strasse 35, 81373 München, Germany (professional representative).

On 09/03/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 614 827 is rejected as inadmissible.

2. The opposition fee will not be refunded.

REASONS:

The opponent filed an opposition against part of the goods and services of Community trade mark application No 14 426 911 ‘IMPACT’, namely against goods and services in Classes 9 and 37. The opposition is based on the following earlier trade marks:

1. Romanian trade mark registration No 95 598 ‘IMPACT’,

2. Romanian trade mark registration No 48 017 ‘IMPACT PLACEREA DE A LOCUI’,

3. No 87 427 ‘DELUXE VILE IMPACT’,

4. No 87 350 ‘PRESTIGE VILE IMPACT’,

5. No 89 846 ‘ANSAMBLU REZIDENTIAL ROUA IMPACT’,

6. No 90 755 ‘IMPACT DEVELOPER & CONTRACTOR S.A.’,

7. No 95 621 ‘IMPACT DEVELOPER & CONTRACTOR’,

8. No 95 602 ‘ANSAMBLUL IMPACT’,

9. ‘ANSAMBLUL REZIDENTIA ROUA VILE IMPACT’,

10. ‘IMPACT DEVELOPER AND CONTRACTOR’,

11. ‘IMPACT DEVELOPER AND CONTRACTOR S.A.’

The opponent invoked Article 8(1)(a) and (b) and 8(5) CTMR.

ADMISSIBILITY – ABSOLUTE REQUIREMENTS

According to Rule 15(2)(b) CTMIR, the notice of opposition shall contain a clear identification of the earlier mark or earlier right on which the opposition is based, namely:

i) where the opposition is based on an earlier mark within the meaning of Article 8(2)(a) or (b) CTMR or where the opposition is based on Article 8(3) CTMR, the indication of the file number or registration number of the earlier mark, the indication whether the earlier mark is registered or an application for registration, as well as the indication of the Member States including, where applicable, the Benelux, in or for which the earlier mark is protected, or, if applicable, the indication that it is a Community trade mark.

According to Rule 17(2) CTMIR, if the notice of opposition does not clearly identify the earlier mark on which the opposition is based in accordance with Rule 15(2)(b) CTMIR, and if the deficiency has not been remedied before the expiry of the opposition period, the Office shall reject the opposition as inadmissible.

On 23/11/2015, the opponent filed notice of opposition against the contested application. However, for the following marks, the opponent failed to indicate the territory in which the earlier trade mark is protected:

3. No 87 427 ‘DELUXE VILE IMPACT’,

4. No 87 350 ‘PRESTIGE VILE IMPACT’,

5. No 89 846 ‘ANSAMBLU REZIDENTIAL ROUA IMPACT’,

6. No 90 755 ‘IMPACT DEVELOPER & CONTRACTOR S.A.’,

7. No 95 621 ‘IMPACT DEVELOPER & CONTRACTOR’,

8. No 95 602 ‘ANSAMBLUL IMPACT’,

9. ‘ANSAMBLUL REZIDENTIA ROUA VILE IMPACT’,

10. ‘IMPACT DEVELOPER AND CONTRACTOR’,

11. ‘IMPACT DEVELOPER AND CONTRACTOR S.A.’

Furthermore, for the following marks, the opponent also failed to indicate the file number or registration number of the earlier mark:

9. ‘ANSAMBLUL REZIDENTIA ROUA VILE IMPACT’,

10. ‘IMPACT DEVELOPER AND CONTRACTOR’,

11. ‘IMPACT DEVELOPER AND CONTRACTOR S.A.’

These deficiencies were not remedied before the expiry of the opposition period, namely on or before 24/11/2015. Consequently, the opposition must be rejected as inadmissible insofar as it is based on the above-mentioned earlier trade marks.

ADMISSIBILITY – RELATIVE REQUIREMENTS

According to Rule 15(3)(a) CTMIR, the notice of opposition may contain an indication of the goods and services against which the opposition is directed; in the absence of such an indication the opposition shall be considered to be directed against all the goods and services of the contested Community trade mark application.

In the present case, the goods in Class 9 against which the opposition is directed are not indicated in a clear and unambiguous way. Namely, the goods in Class 9 against which the opposition is directed do not correspond to those of the contested CTM application.

According to Rule 15(2)(d) CTMIR, the notice of opposition shall contain the filing date and, where available, the registration date and the priority date of the earlier mark, unless it is an unregistered well-known trade mark.

In the present case, the notice of opposition does not contain a correct filing date of the earlier Romanian trade mark No 95 598 ‘IMPACT’ because the filing date indicated by the opponent is later than the registration date indicated by the opponent. Regarding the earlier Romanian trade mark No 48 017 ‘IMPACT PLACEREA DE A LOCUI’, the notice of opposition does not contain the filing date and, if applicable, the priority date of this earlier mark.

According to Rule 17(4) CTMIR, if the notice of opposition does not comply with the provisions of Rule 15 CTMIR (other than those referred to in paragraphs 1, 2 and 3 of Rule 17 CTMIR), the Office shall inform the opponent accordingly and shall invite him to remedy the deficiencies noted within a period of two months. If the deficiencies are not remedied before this time limit expires, the Office shall reject the opposition as inadmissible.

The Office informed the opponent of the deficiencies in its notification dated 27/11/2015. The opponent was set a time limit of two months, until 27/01/2016, to remedy the deficiencies, namely: (i) to clearly indicate against which goods in Class 9 the opposition is directed, (ii) to provide the correct filing date of the earlier Romanian trade mark No 95 598 ‘IMPACT’ and (iii) to provide the filing date and, if applicable, the priority date of the earlier Romanian trade mark No 48 017 ‘IMPACT PLACEREA DE A LOCUI’.

The opponent did not reply within the prescribed time limit.

The opposition must therefore, be rejected as inadmissible, as far as it is based on these earlier marks and as far as it is directed against the goods in Class 9.

Please note that the opposition fee will not be refunded. In accordance with Rule 18(5) CTMIR, the Office only refunds the opposition fee in view of a withdrawal and/or restriction of the trade mark during the cooling-off period.

The Opposition Division

Vít MAHELKA

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.