OPPOSITION Nо B 3 103 846

 

Institute For Manufacturing Excellence GmbH, Fraunhoferstraße 22, 82152 Martinsried, Germany (opponent), represented by Grüter, Stresemannstraße 20-22, 47051 Duisburg, Germany (professional representative) 

 

a g a i n s t

 

International Merchandise Exchange And Exhibition Holdings Limited, Flat/rm 6701, 67/f., Central Plaza,18 Harbour Road, Wanchai, Hong Kong (applicant), represented by Aomb Polska Sp. Z.O.O., Emilii Plater 53, 21st Floor, 00113 Warszawa, Poland (professional representative).

 

On 03/07/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 103 846 is rejected as inadmissible.

 

2.	The opposition fee will not be refunded.

 

REASONS

 

The opponent filed an opposition against some of the services of European Union trade mark application No 18 081 009  (figurative mark), namely against all the services in Class 35. The opposition is based on European Union trade mark application No 18 081 009  (figurative mark). The opponent invoked Article 8(1)(a) 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:

1. if it is identical with the earlier trade mark 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;

2. if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks 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 trade marks 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 trade marks. According to subparagraph (b) of the same Article, ‘earlier trade marks’ can be applications for the trade marks referred to in subparagraph (a), subject to their registration.

On 22/11/2019, the opponent filed notice of opposition against the contested application.

The opponent indicated in the notice of opposition that the opposition is based on European Union trade mark application No 18 081 009  (figurative mark), i.e. on the contested mark.

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. Consequently, the mark on which the opposition is based, i.e. the contested European Union trade mark application No 18 081 009 which has the same filing date as the contested mark, cannot be held to be an earlier right in the sense of Article 8(2) EUTMR.

The opponent did not invoke in the notice of opposition submitted on 22/11/2019 any other trade mark as basis of the opposition.

The Office informed the opponent in its notification dated 27/02/2020 of the absolute admissibility deficiency and that the opposition must be rejected as inadmissible. This deficiency has not been remedied by the opponent on its own initiative before the expiry of the opposition period, namely, before 11/02/2020. The opponent was set a time limit of two months, until 27/04/2020 to submit any comments on the matter. This time limit was extended with the Decision No EX-20-3 of the Executive Director of the Office of 16 March 2020 concerning the extension of time limits and the subsequent Decision No EX-20-4 of 29 April 2020 and expired on 18/05/2020.

The opponent did not reply within the prescribed time limit.

The opposition must therefore, 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

Reet ESCRIBANO

Maria José LOPEZ BASSETS

 

 

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.