Opposition against application of a trademark registration in Europe
On 19th of December 2016, the Opposition Division issued a decision regarding opposition against application of an EU trademark. The opposition division is part of the European Union Intellectually Property Office, responsible for EU trademarks, designs, and etc. The relevant provisions, governing those kinds of issues are announced in the EU trademark regulation (EUTMR).
The opposition is filled by Tetra GmbH from Germany qua opponent against some of the goods of European Union trademark application, filled by the applicant Fitoplancton Marino S.L. from Spain. The contested goods are dietary supplements for animals and the reason for opposition is that the EU trade mark application, which the applicant wants to register afterwards is similar to the early registered trademark by the opponent Tetra GmbH. In order to protect its own commercial interest and to avoid likelihood of confusion, that could appear among of the customers because of the similarity of the vision of the trademarks, the EUTM Regulation provides an instrument for protection. Namely this is article 8 of the regulation, that says "Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if..." and then it continues with the enumeration of the conditions. The opponent fears exactly on the “likelihood of confusion”, which is one of the ground for including the action of the art. 8 of the EUTMR.
The defense of the applicant is article 42(2) and (3) EUTMR, in accordance to which, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use. According to the same provision, in the absence of such proof the opposition must be rejected.
Taking into consideration all of the above mentioned and after the relevant procedure, the opposition division decided to upheld the opposition for all the contested goods, namely: dietary supplements for animals. European Union trademark application is rejected for all the contested goods. It may proceed for the remaining, non-contested, goods. The applicant bears the costs.
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