OPPOSITION Nо B 3 126 426

 

Mainetti (Uk) Limited, Oxnam Road, TD8 6NN Jedburgh, Roxburgshire, United Kingdom (opponent), represented by McDaniels Law, Suite 1.01, Northern Design Centre, Abbot's Hill, NE8 3DF Gateshead, United Kingdom (professional representative)

a g a i n s t

Polyloop, 136 Route de Triors, 26750 Génissieux, France (applicant), represented by Cabinet Laurent & Charras, Le Contemporain 50, Chemin de la Bruyère, 69574 Dardilly Cedex, France (professional representative).

On 10/12/2020, the Opposition Division takes the following

 

 

DECISION:

1.	Opposition No B 3 126 426 is rejected as inadmissible.

 

2.	The opposition fee will not be refunded.

 

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 222 409 ‘POLYLOOP’ (word mark), namely against all the goods and services in Classes 1, 7, 17, 37, 40 and 42. The opposition is based on non-registered mark ‘POLYLOOP’ (word) and (figurative), used in the course of trade in the European Union. The opponent invoked Article 8(4) EUTMR.

 

ADMISSIBILITY

According to Article 46(1)(a) EUTMR, within a period of three months following the publication of an EUTM application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8 EUTMR:

[…]

(c) by the proprietors of earlier marks or signs referred to in Article 8(4) and by persons authorised under the relevant national law to exercise these rights;

[…].

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

(iv) where the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, an indication of its kind or nature, a representation of the earlier right, and an indication of whether this earlier right exists in the whole Union or in one or more Member States, and if so, an indication of the Member States.

According to Article 5(3) EUTMDR, where the notice of opposition does not comply with Article 2(2)(b) EUTMDR, and where the deficiencies have not been remedied before the expiry of the opposition period, the Office shall reject the opposition as inadmissible.

On 20/07/2020, the opponent filed notice of opposition against the contested application.

The opponent based its opposition under the grounds of Article 8(4) EUTMR on European Union non-registered trade marks ‘POLYLOOP’ and .

On 21/08/2020, the Office informed the opponent that the opposition was inadmissible because it did not clearly identify the earlier right on which it is based. Indeed, in the notice of opposition there is no indication of the Member State(s) where the right is claimed to exist. As non-registered trade marks are not protected at European Union level, a ‘European Union non-registered trade mark’ is not an eligible basis for opposition. The Office further informed the opponent that this deficiency could not be remedied and set a time limit of two months, expiring 26/10/2020, to submit any comments on the matter.

The opponent replied on 26/10/2020, within the time limit, indicating that is apparent from the business address of the opponent and also the opponent’s representative and from the language of the opposition that the unregistered right claimed is clearly applicable in the member state of the United Kingdom (England and Wales) and that the basis for the national right claimed is the tort of passing off.

However, nothing in the opponent’s comments can change anything to the fact that the deficiency has not been remedied before the expiry of the opposition period, as required under Article 5(3) EUTMDR. As already indicated above, according to Article 2(2)(b)(iv) EUTMDR, where the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the notice of opposition shall contain a clear identification of the earlier mark or right on which the opposition is based, in particular an indication of whether this earlier right exists in the whole Union or in one or more Member States, and if so, an indication of the Member States. In the present case, the opponent expressly indicated in its notice of opposition that it bases this opposition on a ‘European Union non-registered trade mark’. Yet, non-registered trade marks are not harmonised at European Union level; they are governed exclusively by the laws of the Member States. Consequently, a ‘European Union non-registered trade mark’ as such does not exist and cannot form a valid basis of an opposition under the grounds of Article 8(4). In case the opponent´s intention was to base the present opposition on non-registered trade marks in one or more of the Member States of the European Union, in accordance with Article 2(2)(b)(iv) EUTMDR it should have specified the Member State(s) where the earlier right(s) exist(s) before the expiry of the opposition period. However, despite the explanations given in the opponent’s reply of 26/10/2020, the opponent failed to do so and consequently, the opposition based on the non-registered European Union trade marks is to be rejected as inadmissible pursuant to Article 5(3) EUTMDR.

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

 

 

Martina GALLE

Trinidad NAVARRO CONTRERAS

Maria José LÓPEZ 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.