Decision Nº O/898/22 from Intellectual Property Office - (Trade market), 18 October 2022
| Court | Intellectual Property Office (United Kingdom) |
| Judge | Ms L Fayter |
| Administrative Decision Number | O/898/22 |
| Registration Number | WO0000001544381, WO0000001546145 |
| Date | 18 October 2022 |
o/898/22
TRADE MARKS ACT 1994
CONSOLIDATED PROCEEDINGS
IN THE MATTER OF INTERNATIONAL REGISTRATION NOS.
WO0000001546145 AND WO0000001544381
BY STO SE & CO. KGAA
TO REGISTER THE TRADE MARKS:
StoPanel
IN CLASSES 6, 17 AND 19
AND
StoPanel Technology
IN CLASSES 6, 17, 19 AND 37
AND
IN THE MATTER OF OPPOSITION THERETO
UNDER NOS. 423232 AND 423308
BY CUPA STONE S.L.U.
2
BACKGROUND AND PLEADINGS
1. International trade mark 1544381 (“the First IR”) consists of the word StoPanel
shown on the cover page of this decision. The holder is Sto SE & Co. KGaA. The First
IR is registered with effect from 27 April 2020. With effect from 27 April 2020, the
holder designated the UK as a territory in which it seeks to protect the IR under the
terms of the Protocol to the Madrid Agreement. The goods in which holder seeks
protection for the First IR are contained in the Annex to this decision.
2. International trade mark 1544381 (“the Second IR”) consists of the words StoPanel
Technology shown on the cover page of this decision. The holder is Sto SE & Co.
KGaA. The Second IR also is registered with effect from 27 April 2020. With effect
from 27 April 2020, the holder designated the UK as a territory in which it seeks to
protect the IR under the terms of the Protocol to the Madrid Agreement. The goods
and services in which holder seeks protection for the Second IR are contained in the
Annex to this decision.
3. The request to protect the First IR was published on 13 November 2020. The
request to protect the Second IR was published on 20 November 2020.
4. On 15 February 2021, and 22 February 2021, CUPA STONE S.L.U. (“the
opponent”) opposed the protection of both IR’s in the UK based upon section 5(2)(b)
of the Trade Marks Act 1994 (“the Act”). The opponent relies on the following trade
marks:
European Union trade mark no.0058957921
1 Although the UK has left the EU and the transition period has now expired, EUTMs, and International
Marks which have designated the EU for protection, are still relevant in these proceedings given the
impact of the transitional provisions of The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019
– please see Tribunal Practice Notice 2/2020 for further information.
3
Filing date 11 May 2007; registration date 10 April 2008.
(“The First Earlier Mark”)
Stonepanel Sky
European Union trade mark no.008365744
Filing date 16 June 2009; registration date 10 February 2010.
(“The Second Earlier Mark”)
European Union trade mark no.006011571
Filing date 18 June 2007; registration date 29 May 2008.
(“The Third Earlier Mark”)
5. For the opposition against the First IR, the opponent only relies upon class 19 for
all of the above marks. For the opposition against the Second IR, the opponent relies
upon both class 19 and 37 for all of the above marks. All of the specifications for the
opponent’s earlier marks are contained in the Annex to this decision.
6. I note that the opposition against the First IR is directed against all of the holder’s
goods in classes 6 and 19, and in relation to all the goods other than “extruded plastics
[semi-finished products]; extruded plastic in the form of bars, blocks, pellets, rods,
sheets and tubes for use in manufacturing; double profiles and expansion profiles of
plastic” in class 17.
7. I note that the opposition against the Second IR is directed against all of the holder’s
goods in classes 6 and 19, and in relation to all the goods other than “adhesive tapes
including double-sided adhesive tapes, other than stationary and not for medical or
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