DECISION

of the Fourth Board of Appeal

of 12 July 2016

concerning the REVOCATION of its Decision dated

22 February 2016

In Case R 1561/2014-4

Fedrigoni S.p.A.
Viale Piave, 3 37135 Verona Italy	Applicant / Appellant

represented by Gabriella Diana Modiano & Associati S.P.A., Via Meravigli, 16, 20123 Milano, Italy

v

Sappi Europe S.A.
Chaussée de la Hulpe, 154 1170 Brussels Belgium	Opponent / Respondent

represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, The Netherlands

APPEAL relating to Opposition Proceedings No B 2 195 652 (European trade mark application No 11 534 666)

THE FOURTH BOARD OF APPEAL

composed of D. Schennen (Chairperson), F. López de Rego (Rapporteur) and C. Bartos (Member)

Registrar: H. Dijkema

gives the following

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Decision

Summary of the facts

1. By an application of 31 January 2013, Fedrigoni S.p.A. (‘the applicant’) sought to register the word mark

ARCODESIGN

as a European Union trade mark (‘EUTM’) for, among others, the following goods:

Class 16 – Paper, cardboard and goods made from these materials, not included in other classes; Bookbinding material; Artists' materials; Plastic materials for packaging (not included in other classes); Adhesives for stationery purposes; office requisites (except furniture).

2. On 4 June 2013, a notice of opposition was filed by Sappi Europe S.A. (‘the opponent’) based on the earlier International Registration (‘IR’) No  935 034 designating the European Union

ALGRO DESIGN

registered on 21 August 2007 for the following goods:

Class 16 – Paper, printing paper.

3. The grounds for opposition was likelihood of confusion as laid down in Article 8(1)(b) EUTMR. The opposition was directed against all the goods of the application and was based on all the goods for which the earlier trade mark was registered.
4. On 16 May 2014, the Opposition Division adopted the contested decision whereby it rejected the EUTM application partially, namely for the goods listed in paragraph 1 above (‘the contested goods’), and ordered that each party bear its own costs.
5. On 20 June 2014, the applicant filed a notice of appeal against the contested decision. As to the extent of the appeal, the opponent split the indication of the corresponding goods between the notice of appeal and a separate sheet.
6. By decision dated 22 February 2016, the Board dismissed the appeal. The decision was based with regard to the goods indicated on the separate sheet only.
7. On 13 March 2016, the applicant indicated that its appeal was directed against the contested decision with regard to all the goods which have had been rejected by the Opposition Division.
8. A revision of the file reveals that the Decision of 22 February 2016 did not settle the whole subject-matter of the appeal proceedings. In reviewing the notice of appeal and the separate sheet, it appears that the intention of the applicant was to extend the appeal to all the goods which had been rejected by the Opposition Division, whereas the Decision of 22 February 2016 refers only to part of them.
9. Pursuant to Article 80 EUTMR and Rule 53a(2) CTMIR the Board issued a communication to the parties indicating its intention to revoke the Decision of 22 February 2016 giving them the opportunity to file observations.
10. No observations were filed within the set time limit.
11. Therefore the Board hereby revokes the Decision of 22 February 2016 and a new decision will be issued.

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Order

On those grounds,

THE BOARD

hereby:

Revokes the decision dated 22 February 2016 in the appeal case No 1561/2014-4.

Signed D. Schennen

Signed F. López de Rego

Signed C. Bartos

Registrar: Signed H.Dijkema