RAFFLES HOTELS & RESORTS | Decision 2635962 - Arosa Limited v. Raffles International Limited
Date Published: Sep 28, 2017
OPPOSITION No B 2 635 962
Arosa Limited, Ioma House, Hope Street, Douglas IM1 1AP, Isle of Man (opponent)
a g a i n s t
Raffles International Limited, 1 Wallich Street, #17-01 Guoco Tower, Singapore 078881, Singapore (applicant), represented by Wildbore & Gibbons LLP, Sycamore House 5 Sycamore Street, London EC1Y 0SG, United Kingdom (professional representative).
On 08/03/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 635 962 is rejected as inadmissible.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 481 501, namely for the word mark ‘RAFFLES’ and for all the goods and services in Classes 3, 16, 25, 35, 41 and 44. The opposition is based on United Kingdom trade mark applications No 3 037 817, No 3 037 820 for the word marks ‘RAFFLES CLUB’ and ‘RAFFLES CLUB CHELSEA’, respectively, United Kingdom trade mark registrations No 2 562 767 and No 2 562 764 for the word marks ‘RAFFLES CLUB’ and ‘RAFFLES CLUB CHELSEA’, respectively, as well as on the earlier well-known mark ‘RAFFLES’ for goods and services in Classes 9, 28 and 41 and earlier non-registered mark ‘RAFFLES’ for Classes 3, 9, 16, 25, 28, 35, 41 and 43. The opponent invoked Article 8(1)(b) EUTMR, also in combination with Article 8(2)(c) EUTMR, Article 8(5) EUTMR and 8(4) EUTMR.
ADMISSIBILITY
According to Article 92(2) EUTMR, natural or legal persons not having either their domicile or their principal place of business or a real and effective industrial or commercial establishment in the EEA must be represented before the Office in accordance with Article 93(1) EUTMR in all proceedings established by this Regulation, other than in filing an application for a European Union trade mark.
In the present case, the opponent does not have its domicile or principal place of business or a real and effective industrial or commercial establishment in the European Union. The opponent was initially represented before the Office in accordance with Article 93(1) EUTMR. However, on 21/06/2016 the opponent’s professional representative informed the Office that it resigned and that the representation of the opponent in the present proceedings ceased to exist.
According to Rule 17(4) EUTMIR, if the notice of opposition does not comply with the provisions of Rule 15 EUTMIR (other than those referred to in paragraphs 1, 2 and 3 of Rule 17 EUTMIR), the Office shall inform the opponent accordingly and shall invite him to remedy the deficiencies noted within a period of two months. If the deficiencies are not remedied before this time limit expires, the Office shall reject the opposition as inadmissible.
The Office informed the opponent of the deficiency in its notification dated 28/06/2016. The opponent was set a time limit until 10/09/2016 to remedy the deficiency, namely to designate a representative in accordance with Article 93(1) EUTMR. As the notification to the opponent failed, the Office proceeded to notify the opponent by means of public notification in accordance with Rules 61 and 66 EUTMIR and the Decision No EX-05-6 of the President of the Office of 27/07/2005. Consequently, the new deadline for the opponent to remedy the deficiency expired on 12/12/2016.
The opponent did not reply within the prescribed time limit.
The opposition must therefore, be rejected as inadmissible.
According to Article 85(1) EUTMR and Rule 18(4) EUTMIR, a decision on costs is taken in opposition proceedings that have passed the cooling-off period, that is to say, after the adversarial part of the proceedings has started and comes to an end. In the present case, the resignation of the representative took place after the adversarial part of the proceedings had begun. Therefore, a decision on costs is taken hereafter.
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
Sandra IBAÑEZ | Benoit VLEMINCQ | Martina GALLE |
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.