Sovereign Order of Saint John of Jerusalem (S.O.S.J.) - Knights of Malta - The Hereditary Order | Decision 2706441 - SOVEREIGN MILITARY HOSPITALLER ORDER OF ST. JOHN OF JERUSALEM OF RHODES AND OF MALTA v. Sovereign Order of Saint John of Jerusalem, - Knights of Malta, - the International Grand Priory
Date Published: Sep 28, 2017
OPPOSITION No B 2 706 441
Sovereign Military Hospitaller Order of St. John of Jerusalem of Rhodes and of Malta, Via Condotti 68, 00187 Rome, Italy (opponent), represented by Keesom & Hendriks N.V., Delistraat 45, 2585 VX Den Haag, the Netherlands (professional representative)
a g a i n s t
Sovereign Order of Saint John of Jerusalem, - Knights of Malta - the International Grand Priory, 66 Sir Patrick Stuart Street, Gzira GZR 1050, Malta (applicant), represented by Advocates Chetcuti Cauchi, Law Firm, Britannia House, Melita Street, Valletta VLT 12, Malta (professional representative).
On 31/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 706 441 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 of European Union trade mark application No 15 168 339 for the mark ‘Sovereign Order of Saint John of Jerusalem (S.O.S.J.) – Knights of Malta – The Hereditary Order’, namely against those in Classes 16, 36 and 41. The opposition is based on the following European Union trade mark registrations: No 3 921 939 for the word mark ‘SOVEREIGN MILITARY HOSPITALLER ORDER OF ST. JOHN OF JERUSALEM OF RHODES AND OF MALTA’, registered for services in Classes 44 and 45; No 3 921 954 for the word mark ‘SOVEREIGN MILITARY ORDER OF MALTA’, registered for services in Classes 44 and 45; No 3 921 962 for the word mark ‘KNIGHTS OF MALTA’, registered for services in Classes 44 and 45; No 3 922 002 for the word mark ‘SOVEREIGN ORDER OF MALTA’ registered for services in Classes 44 and 45; No 3 922 028 for the word mark ‘ORDER OF MALTA’ registered for services in Classes 44 and 45; No 4 242 913 for the word mark ‘HOSPITALLERS OF ST. JOHN OF JERUSALEM’ registered for services in Classes 44 and 45; No 4 242 921 for the word mark ‘KNIGHTS HOSPITALLERS’ registered for services in Classes 44 and 45; No 4 242 947 for the word mark ‘KNIGHTS OF ST. JOHN OF JERUSALEM’ registered for services in Classes 44 and 45; No 4 242 954 for the word mark ‘ORDER OF ST. JOHN OF JERUSALEM’ registered for services in Class 45 and No 5 025 234 for the word mark ‘ORDER OF ST. JOHN OF JERUSALEM’ registered for services in Class 44. The opponent invoked Article 8(1)(b) in relation to all the above European Union trade marks and 8(5) EUTMR in relation to European Union trade marks No 3 921 939 and No 3 922 028.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The same provision states that, in the absence of such proof, the opposition will be rejected.
The applicant requested that the opponent submit proof of use of all the trade marks on which the opposition is based.
The request was filed in due time and it is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.
On 24/01/2017 the opponent was given two months to file the requested proof of use. This deadline expired on 29/03/2017.
The opponent submitted evidence of use of the earlier trade marks. However, this evidence was submitted only on 18/04/2017, whereas the time limit for submitting proof of use expired on 29/03/2017. It follows from the wording of Rule 22(2) EUTMIR that the time limit laid down is a strict one, which means that the Office cannot take into account evidence submitted for the first time after the expiry of the time limit (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 28). Therefore, it is considered that the opponent did not submit proof of use or show that there were proper reasons for non-use within the time limit set by the Office.
With respect to the opponent’s argument that proof of use has already been submitted in previous proceedings at the Office, the Opposition Division points out that even though this might be the case, the Office accepts such references only on the condition that the opponent clearly identifies the material referred to and the proceedings in which it was filed. As the opponent did not sufficiently make reference to identify the relevant material, this argument of the opponent has to be set aside.
According to Rule 22(2) EUTMIR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition.
Therefore, the opposition must be rejected pursuant to Article 42(2) EUTMR and Rule 22(2) EUTMIR.
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
Martin MITURA | Chantal VAN RIEL | Vít MAHELKA |
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.