Decision Nº O/431/19 from Intellectual Property Office - (Trade market), 25 July 2019
| Judge | Ms S Wilson |
| Administrative Decision Number | O/431/19 |
| Date | 25 July 2019 |
| Registration Number | UK00003295534 |
| Court | Intellectual Property Office (United Kingdom) |
O/431/19
IN THE MATTER OF APPLICATION NO. UK00003295534
BY KOLCHAGOV BARBA LTD
TO REGISTER THE TRADE MARK:
IN CLASSES 3, 18 AND 25
AND
IN THE MATTER OF OPPOSITION THERETO
UNDER NO. 413656 BY
BARBA S.R.L.
2
BACKGROUND AND PLEADINGS
1. On 9 March 2018, Kolchagov Barba LTD (“the applicant”) applied to register the
trade mark shown on the cover page of this decision in the UK. The application was
published for opposition purposes on 8 June 2018. Registration is sought for the goods
shown in the Annex to this decision.
2. The application is opposed by BARBA S.R.L. (“the opponent”) based upon section
registration no. 2293504 for the mark BARBA. The earlier mark was filed on 9 July
2001 and registered on 2 August 2006. The opponent relies on all goods for which the
earlier mark is registered, specifically:
Class 3 Bleaching preparations and other substances for laundry use; cleaning,
polishing, scouring and abrasive preparations; soaps; perfumery,
essential oils, cosmetics, hair lotions; dentifrices.
Class 18 Leather and imitations of leather, and goods made of these materials
and not included in other classes, animal skins; trunks and travelling
bags; umbrellas, parasols and walking sticks; whips, harness and
saddlery.
Class 25 Clothing, footwear, headgear.
3. The opponent submits that the respective goods are identical or similar and that the
marks are similar.
4. The applicant filed a counterstatement denying the claims made and requesting that
the opponent prove use of its earlier mark.
5. The opponent is represented by Beck Greener LLP and the applicant is
unrepresented. The opponent filed evidence in chief in the form of the witness
statement of Raffaele Barba dated 21 January 2019. The applicant filed evidence in
the form of the witness statement of Emilio Barba dated 21 March 2019. The opponent
3
did not file evidence in reply. No hearing was requested, but both parties filed written
submissions in lieu. This decision is taken following a careful perusal of the papers.
EVIDENCE
Opponent’s Evidence
6. As noted above, the opponent’s evidence consists of the witness statement of
Raffaele Barba (“RB”) dated 21 January 2019. This was accompanied by 8 exhibits.
RB is the founder and sole Director of the opponent; a role he has held since February
1998.
7. RB states that the opponent has made use of its mark in the UK and the EU in
respect of the following goods for which its earlier mark is registered
1
:
“Class 18
Leather and imitations of leather, and goods made of these materials and not
included in other classes, animal skins.
Class 25
Clothing, footwear, headgear.”
8. RB states that since 1998, the opponent has used BARBA and BARBA NAPOLI in
relation to its products. RB states that the opponent’s products are sold in the UK,
Germany, France, Netherlands, Italy, Austria, Spain, Greece, Sweden, Denmark,
Belgium, Bulgaria, Cyprus, Estonia, Finland, Latvia, Lithuania, Luxembourg, Poland,
Romania, Slovakia, Slovenia, Hungary and Czech Republic. RB explains that the
opponent has been in a licence agreement with a third party since 2001.
9. RB states that the opponent has provided the following products:
1
Witness statement of Raffaele Barba, para. 4
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