Mocciani | Decision 2380577 - Mocciani Limited v. Said Naam (Private) Limited

Date Published: Sep 28, 2017

OPPOSITION No B 2 380 577

Mocciani Limited, Suite B, 51 Buchanan Gardens, London NW10 5AB, United Kingdom (opponent),

a g a i n s t

Said Naam (Private) Limited, 333-R, Main Boulevard M. A. Johar Town, Lahore 54000, Islamic Republic of Pakistan (applicant), represented by Renaissance Solicitors LLP, 413 Hoe Street Walthamstow, London E17 9AP, United Kingdom.

On 11/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 380 577 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services in Classes 14, 18, 25 and 35 of European Union trade mark application No 12 667 762 . According to the notice of opposition the opposition is based on United Kingdom trade mark No 3 042 711 ‘MOCCIANI’. The opponent invoked Article 8(1)(a) and (b) EUTMR.

SUBSTANTIATION

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 is 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.

The opponent did not specify in the notice of opposition whether the earlier United Kingdom trade mark No 3 042 711 is a registered trade mark or an application. In a letter dated 04/12/2014 requesting an extension of the time limit set by the Office for the opponent to submit further facts, evidence and arguments, the opponent provides further details with regard to the earlier right and it becomes clear that it is an application that has been opposed by the applicant in the current proceedings Said Naam (Private) Limited.    

If the opposition is based on a trade mark which is not yet registered (as in the case at hand), the opposing party must provide a copy of the relevant filing certificate or an equivalent document emanating from the administration with which the trade mark application was filed (except in the case of a European Union trade mark application) — Rule 19(2)(a)(i) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier trade mark on which the opposition is based.

After requesting the extension of the time limit for submitting further facts, evidence and arguments with the letter referred to above the opponent requested suspension of the current proceedings until a decision is made in the pending proceedings in the United Kingdom and submitted evidence related to the pending registration proceedings before the UK IPO (letter to the Office dated 12/02/2015).

With a letter dated 18/02/2015 the Office granted the requested suspension and stayed the proceedings based on Article 20(7) EUTMIR.

On 14/03/2016 the Office requested the opponent to provide update on the status of the proceedings before the UK IPO which have led to the suspension of the current proceedings.

The opponent did not reply to this letter.

On 12/08/2016 the Office gave two months to the opponent to inform the Office whether a final decision has been taken in the proceedings before the UK IPO regarding the earlier right United Kingdom trade mark application No 3 042 711 and informed the opponent that in the absence of any reply the Office will resume the proceedings and will set the relevant time limits to the parties. A copy of the letter has been sent to the applicant in the current proceedings as well.

In the absence of any reply to the above letter of the Office, on 13/12/2016 the Office set the new time limit for the opponent to substantiate its earlier right.

This time limit expired on 18/02/2017.

The opponent did not submit any evidence concerning the substantiation of the earlier trade mark.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

Apart from the fact that the opponent did not provide a copy of the relevant filing certificate or an equivalent document emanating from the administration with which the trade mark application was filed, namely the UK IPO, which is as such a justified and sufficient ground for rejecting the opposition as unfounded, it is observed by the Opposition Division that the current opposition is filed by the legal entity Mocciani Limited, while the trade mark applied for registration before the UK IPO seems to be in the name of the natural person Sabah Mauladad. At least this information can be inferred from the notice of opposition filed before the UK IPO and other references to be found in the evidence material submitted by the opponent on 12/02/2015 supporting its request for suspension of the current opposition. This discrepancy between the entity that filed the opposition and the owner of the earlier mark would be a separate ground for rejecting the opposition.  

Bearing in mind the above 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.

The Opposition Division

Liliya YORDANOVA

Plamen IVANOV

Ana MUÑIZ RODRIGUEZ

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.