OPPOSITION No B 2 722 760

CKL Holdings N.V., Leeuwenstraat 4, 2000 Antwerpen, Belgium (opponent).

a g a i n s t

Michele Hope, Evelyn House, 3 Elstree Way, Borehamwood Hertfordshire WD6 1RN, United Kingdom (applicant), represented by MW Trade Marks Ltd., 88 Kingsway, London  WC2B 6AA, United Kingdom (professional representative).

On 18/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 722 760 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 265 317, namely against all the goods in Classes 18 and 25. The opposition is based on Benelux trade mark application No 1 310 442. The opponent invoked Article 8(1)(b) EUTMR.

Michelle	MICHELE HOPE
Earlier trade mark	Contested sign

CEASING OF EXISTENCE OF THE EARLIER RIGHT

According to Article 41(1)(a) EUTMR, within a period of three months following the publication of an EU trade mark application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8:

1. by the proprietors of earlier trade marks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and (5);

 […]

Furthermore, according to Article 8(2) EUTMR, ‘earlier trade mark’ means:

(i) trade marks with a date of application for registration which is earlier than the date of application of the contested mark, taking account, where appropriate, of the priorities claimed in respect of the marks referred to in Article 8(2)(a) EUTMR;

(ii) applications for a trade mark referred to in Article 8(2)(a) EUTMR, subject to their registration;

(iii) trade marks which are well known in a Member State.

Therefore, the legal basis of the opposition requires the existence and validity of an earlier right within the meaning of Article 8(2) EUTMR.

In this respect, if, in the course of the proceedings, the earlier right cease to exist, the final decision cannot be based on the earlier right. The opposition may be upheld only with respect to an earlier right that is valid at the moment when the decision is taken. The reason why the earlier right has ceased to exist does not matter. Since the Benelux application has ceased to have effect, the opposition cannot be upheld to this extent. Such a decision would be unlawful (13/09/2006, T-191/04, Metro, EU:T:2006:254, § 33-36).

On 02/08/2016 the opponent was given until 07/12/2016 to submit further facts, arguments and evidence in support of the opposition. On 07/12/2016 the opponent submitted a copy of the Benelux trade mark application No 1 310 442.

On 17/01/2017 the applicant submitted an extract from the Benelux Office for Intellectual Property’s website, confirming that the opponent’s earlier application had been withdrawn, as a result of an opposition proceeding before the Benelux Office of which the applicant also submitted a copy.

As the earlier right invoked as the basis for the opposition has ceased to exist and no longer constitutes a valid legal base on which the final decision can be based, the opposition must be rejected as unfounded.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Adriana VAN ROODEN

Christian RUUD

Frédérique SULPICE

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.