TMP | Decision 2092875 - TMP Intellectual Property Holdings, LLC v. RLG International Inc.

Date Published: Sep 25, 2017

OPPOSITION No B 2 092 875

TMP Intellectual Property Holdings, LLC, 125 Broad Street, 10th Floor, New York, New York 10004, United States of America (opponent), represented by Murgitroyd & Company, Scotland House, 165-169 Scotland Street, Glasgow G5 8PL, United Kingdom (professional representative)

a g a i n s t

RLG International Inc., 4710 Kingsway, Suite 2800, Burnaby British Columbia V5H 4M2, Canada (applicant), represented by IP21 LTD, Central Formalities Department,  Lakeside 300, Old Chapel Way, Broadland Business Park, Norwich, Norfolk NR7 0WG, United Kingdom (professional representative).

On 28/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 092 875 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 10 952 281 for the word mark ‘TMP’, namely against all the services in Class 35. The opposition is based on the following earlier marks:

• European Union trade mark registration No 706 648 for the word mark ‘TMP WORLDWIDE’, in Classes 35 and 42;  
• Benelux trade mark registration No 695 137 for the word mark ‘TMP WORLDWIDE’, in Class 35;
• Czech Republic trade mark registration No 228 316 for the word mark ‘TMP WORLDWIDE’, in Class 35;
• French trade mark registration No 97 709 706 for the word mark ‘TMP WORLDWIDE’, in Class 35;
• French trade mark registration No 97 709 707 for the word mark ‘TMP’, in Class 35;
• Hungarian trade mark registration No 160 248 for the word mark ‘TMP WORLDWIDE’, in Class 35;
• Polish trade mark registration No 140 372 for the word mark ‘TMP WORLDWIDE’, in Class 35.

The opponent invoked Article 8(1)(b) EUTMR for all the earlier marks and also Article 8(5) EUTMR as regards earlier European Union trade mark registration No 706 648.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication 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 is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

On 24/02/2017, the opponent was given two months to file the requested proof of use. After a request by the opponent, said time limit was extended until 24/06/2017.

On 21/04/2017, the opponent’s professional representative informed the Office that ‘the formal relevant evidence’ from the opponent was still not available and, in the meantime, a copy of some pages purportedly from the opponent’s website were enclosed to show that the opponent has been using its mark in the United Kingdom and Ireland. The Opposition Division notes that the three pages submitted, although referring to ‘tmp.worldwide’, the services provided and its offices in the United Kingdom and Ireland, are not sufficient on their own to reach any conclusions as regards the genuine use of the earlier marks. In particular, these extracts seem to have been printed in 2017 (as for the last page), therefore clearly out of the relevant period. In addition, the information contained originates from the opponent rather than from an independent source. Consequently, in the absence of any further material or arguments from the opponent, these pages cannot be considered ‘relevant evidence’ (as initially warned by the opponent’s professional representative).

In view of the foregoing, the opponent did not furnish any evidence concerning the use of the earlier trade marks on which the opposition is based. It did not argue that there were proper reasons for non-use either.

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) and (3) 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

Vanessa PAGE

Marta GARCÍA COLLADO

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.

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.