OPPOSITION No B 3 082 104

Zhu Xiaokang, San Bernardo, 14, 28015 Madrid, Spain (opponent), represented by Ryo Rodríguez Oca, S.L., Calle Juan Hurtado de Mendoza, 9 Apto. 507, 28036 Madrid, Spain (professional representative)

a g a i n s t

Alma.Mr S.r.l.s., Viale della Regione 232, 93100 Caltanissetta (CL), Italy (applicant), represented by Maroscia & Associati S.R.L., Piazza del Castello 26, 36100 – Vicenza, Italy (professional representative).

On 11/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 082 104 is rejected as inadmissible.

2. The opposition fee will not be refunded.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 009 423 for the figurative mark . The opposition is based on the Spanish trade name No 377 182 ‘ALMA DEL AMOR’. The opponent invoked Article 8(1)(b) EUTMR.

ADMISSIBILITY

According to Article 2(2)(b) EUTMDR, the notice of opposition must 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) EUTMR, 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 an EUTM.

According to Article 5(3) EUTMDR, if the notice of opposition does not clearly identify the earlier mark on which the opposition is based in accordance with Article 2(2)(b) EUTMDR, and if the deficiency has not been remedied before the expiry of the opposition period, the Office will reject the opposition as inadmissible.

According to Article 2(2)(c) EUTMDR, the notice of opposition must contain the grounds on which the opposition is based, namely a statement to the effect that the respective requirements under Article 8(1), (3), (4), (5) and (6) EUTMR are fulfilled.

In particular, the grounds are to be considered properly indicated if one of the relevant boxes in the notice of opposition form is ticked or if it can be inferred from the opponent’s arguments filed within the opposition period. The grounds are also considered to be properly indicated if the earlier mark is identified and it is possible to unequivocally identify the grounds.

According to Article 5(3) EUTMDR, if the notice of opposition does not contain grounds for opposition in accordance with Article 2(2)(c) EUTMDR, and if the deficiency has not been remedied before the expiry of the opposition period, the Office will reject the opposition as inadmissible.

On 03/05/2019, the opponent filed notice of opposition against the contested application. The opponent invoked Article 8(1)(b) EUTMR. In the Notice of opposition the earlier right is designated as a ‘national trade mark application/registration’. However, the evidence filed by the opponent lists the same earlier right as ‘nombre comercial’, that is as a ‘trade name’.

The earlier right that appears to be a ‘trade name’, cannot be a basis for opposition invoked on the ground of Article 8(1) EUTMR, as the ‘trade name’ shall be invoked on the ground of Article 8(4) EUTMR. However, Article 8(4) was not claimed as a ground for opposition in this case.

Consequently, the notice of opposition did not contain a correct indication of the grounds of opposition regarding the earlier right. It follows from Article 2(2)(c) EUTMDR that the opponent failed to invoke the correct ground for opposition regarding their earlier right.

On 17/05/2019 the Office informed the opponent of its findings giving them a time limit of two months that is until 22/07/2019 to submit any comments. The opponent replied on 22/07/2019 claiming that this discrepancy was due to internal problem of the computer treatment of EUIPO. In relation to this argument, it should be noted that the opponent did not attempt any other means of filing the opposition, nor attempted to remedy the deficiency in accordance with Article 5(3) EUTMDR, namely before the expiry of the opposition period, i.e. before 03/05/2019.

Therefore, 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

Begoña URIARTE VALIENTE

Stanislava STOYANOVA

Boyana NAYDENOVA

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.