KIDDO | Decision 2810425
Date Published: Sep 25, 2017
OPPOSITION No B 2 810 425
Kiddoo Limited, Ground & First Floor, 1 Westminster Bridge Road, London SE1 7XW, United Kingdom (opponent), represented by Taylor Wessing LLP, 5 New Street Square, London EC4A 3TW, United Kingdom (professional representative)
a g a i n s t
Kiddo TV International LTD., 3rd Floor 207 Regent Street, London, W1B 3HH, United Kingdom (applicant).
On 21/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 810 425 is rejected in its entirety.
2. The opponent bears the costs.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 707 029 ‘KIDDO’ (word mark), namely against all the services in Classes 38 and 41. The opposition is based on the
non-registered trade mark ‘Kiddoo’ (word mark) claimed to exist in the United Kingdom, for different kinds of telecommunication services.
The opponent invoked Article 8(4) EUTMR.
NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR
According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:
(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.
According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.
In the present case the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade.
On 02/12/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired, after an extension of time granted on 19/04/2017, on 14/06/2017.
The opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based.
Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
Martin MITURA | María del Carmen SUCH SANCHEZ | Richard BIANCHI |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 has been paid.