(Trade mark without text) | Decision 2725920 - Hanson Asset Management Limited v. Honourable Robert William Hanson

Date Published: Sep 28, 2017

OPPOSITION No B 2 725 920

Hanson Asset Management Limited, 8th Floor, 1 Grosvenor Place, London SW1X 7HJ, United Kingdom (opponent), represented by Kilburn & Strode Llp, 20 Red Lion Street, London  WC1R 4PJ, United Kingdom (professional representative)

a g a i n s t

Honourable Robert William Hanson, 7 Ashgrove Road, Huddersfield, West Yorkshire HD2 1FQ, United Kingdom (applicant)

On 16/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 725 920 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 109 341, namely against all the services in Class 36. The opposition is based on United Kingdom trade mark registration No 3 112 420 for services in Classes 35 and 36. The opponent invoked Article 8(1)(b) EUTMR.

Earlier trade mark	Contested sign

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.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) 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.

On 07/07/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 12/11/2016.

The opponent did not submit any relevant evidence concerning the substantiation of the alleged earlier trade mark registration. The only evidence presented as substantiation of the alleged earlier mark, de facto, does not refer to the earlier mark invoked as the basis of the opposition at hand. Albeit the opponent presented within the time limit (the reference is made to the opponent´s observations dated 11/11/2016) an extract from the UKIPO database showing the details of the alleged registration, the document attached reflects a different trade mark, namely United Kingdom trade mark application No 3 143 498 and not the relevant United Kingdom trade mark registration No 3 112 420.

For the sake of completeness, the Opposition Division points out that the certificate of the United Kingdom trade mark application No 3 143 498 cannot be taken into account for the purpose of the present proceedings since, pursuant to Article 15(2)(d) EUTMR, the notice of opposition shall contain a clear identification of the earlier mark or earlier right on which the opposition is based, namely:

i) where the opposition is based on an earlier mark within the meaning of Article 8(2)(a) or (b) EUTMR or where the opposition is based on Article 8(3) EUTMR, the indication of the file number or registration number of the earlier mark, the indication whether the earlier mark is registered or an application for registration, as well as the indication of the Member States including, where applicable, the Benelux, in or for which the earlier mark is protected, or, if applicable, the indication that it is a European Union trade mark.

In light of the above, the United Kingdom trade mark application No 3 143 498 cannot be considered as the basis of the opposition at hand, since the number of the latter does not correspond to the trade mark registration indicated as the basis of the present opposition in the notice of opposition.

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.

The opposition must therefore 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.

Although the winning party is no longer represented by a professional representative at the time of rendering this decision, it was represented by a professional representative within the meaning of Article 93 EUTMR in the course of the opposition proceedings. Therefore, the winning party incurred representation costs which it is entitled to recover, in accordance with Rule 94(7)(d) EUTMIR.

The Opposition Division

Chantal VAN RIEL

Klaudia MISZTAL

Saida CRABBE

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.