VERSAILLES | Decision 2754821

Date Published: Oct 11, 2017

OPPOSITION No B 2 754 821

Michael Bietsch, Glaswandstr. 1, 83671 Benediktbeuren, Germany (opponent), represented by Beiter & Partner Mbb, Rechtsanwälte · Steuerberater, Burgstr. 12, 80331 Muenchen, Germany (professional representative)

a g a i n s t

Commune de Versailles Collectivite Territoriale, Hôtel de Ville 4 Avenue de Paris, 78011 Versailles, France (holder), represented by Ab Initio, 5 rue Daunou, 75002 Paris, France (professional representative).

On 22/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 754 821 is rejected as inadmissible.

2.        The opposition fee will not be refunded.

REASONS:

The opponent filed an opposition against all the goods and services of international registration designating the European Union No 1 302 813 ‘VERSAILLES’, in classes 3, 4, 8, 9, 14, 16, 18, 20, 21, 24, 25, 28, 29, 30, 31, 41. The opposition is based international trade mark registration No 1 302 813  , designating Germany. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

ADMISSIBILITY

In accordance with Article 41 EUTMR, the notice of opposition has to be received by the Office in written form within the opposition period, namely within three months from the publication of the contested EUTM application.

According to Rule 15(2)(b) EUTMIR, the notice of opposition must 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.

According to Rule 17(2) EUTMIR, if the notice of opposition does not clearly identify the earlier mark on which the opposition is based in accordance with Rule 15(2)(b) EUTMIR, and if the deficiency has not been remedied before the expiry of the opposition period, the Office will reject the opposition as inadmissible.

According to Article 8(2)(a) EUTMR, earlier trade marks within the meaning of Article 8(1) EUTMR are those trade marks with a date of application for registration which is earlier than the date of application for registration of the European Union trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks. According to subparagraph (b) of the same Article, ‘earlier trade marks’ can be applications for the trade marks referred to in subparagraph (a), subject to their registration.

On 18/08/2016, the opponent filed notice of opposition against the contested application. The opponent indicated that the basis of the opposition is international trade mark registration No 1 302 813, designating Germany with the filing and registration date of 21/12/2015.

The basis of the opposition coincides with the contested trade mark application, namely international registration designating the European Union No 1 302 813, registered on 21/12/2015.  

Consequently, the right on which the opposition is based is not earlier within the meaning of Article 8(2) EUTMR.

The Office informed the opponent of the deficiency in its notification dated 22/11/2016. The opponent was set a time limit of two months, until 22/01/2017, to submit any comments on the matter. 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

Erkki MÜNTER

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.