SIGNIA | Decision 2298910 - MasterCard International Incorporated v. EE CAPITAL LIMITED

Date Published: Sep 22, 2017

OPPOSITION No B 2 298 910

MasterCard Europe sprl, Chaussée de Tervuren, 198A, 1410 Waterloo, Belgium (opponent), represented by Linklaters LLP, rue Brederode, 13, 1000 Brussels, Belgium (professional representative)

a g a i n s t

Ee Capital Limited, 3rd Floor, Windward House, La Route De La Liberation, St Helier  23BQ, Jersey (applicant), represented by Искра Братованова, ул. "Якубица" № 76, партер, 1169 София, Bulgaria (professional representative).

On 11/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 298 910 is rejected as inadmissible.

2.        The opposition fee will not be refunded.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 11 924 339, namely against all the services in Class 36. The opposition is based on the following marks:

(1) European Union trade mark registration No 3 487 121, for goods and services in Classes 9, 16 and 36;

(2) Benelux countries trade mark registration No 617 701, for goods and services in Classes 16 and 36;

(3) European Union trade mark registration No 1 676 949, for goods and services in Classes 9, 36 and 38;

(4) Benelux trade mark registration No 546 304 for services in Class 36.

The opponent invoked Article 8(1)(b) EUTMR.

WORLD SIGNIA (1) EUTM No 3 487 121 WORLD SIGNIA EUROCARD (2) Benelux trade mark No 617 701  WORLD SIGNIA MASTERCARD (3) EUTM No 1 676 949 (4) Benelux trade mark No 546 304	SIGNIA
Earlier trade mark	Contested sign

ADMISSIBILITY

According to Rule 15(1) EUTMIR, a notice of opposition may be entered on the basis of one or more earlier marks within the meaning of Article 8(2) EUTMR (earlier marks) and/or one or more other earlier rights within the meaning of Article 8(4) EUTMR (earlier rights), provided that the earlier marks or earlier rights all belong to the same proprietor or proprietors. If an earlier mark and/or an earlier right has more than one proprietor (co-ownership), the opposition may be filed by any or all of them.

In the present case, the notice of opposition shows that there is more than one opponent. However, the right to file an opposition jointly with other opponents applies only in cases where the opponents have a certain relationship, namely:

• that they are co-owners of the earlier right(s) on which the opposition is based, or
• that the opposition is filed by the owner or co-owner of an earlier mark or right together with one or more licensees of these earlier marks/rights.

The notice of opposition does not indicate the relationship of the opponents (co-ownership or owner/licensee), nor does it appoint only one opponent from among those listed.

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 will inform the opponent accordingly and 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 will reject the opposition as inadmissible.

The Office informed the opponent of the deficiency in its notification dated 24/04/2017. The opponent was set a time limit of two months, until 24/06/2017, to remedy the deficiency, namely to indicate one of the multiple opponents as the only opponent for the above opposition proceedings as consequence of failure of proving the relationship between the multiple opponents as they are indicated in the notice of opposition.

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 Rule 18(5) EUTMIR, the Office only refunds the opposition fee in view of a withdrawal and/or restriction of the trade mark during the cooling-off period.

The Opposition Division

Francesca DRAGOSTIN

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.