DECISION

of the First Board of Appeal

of 10 January 2017

In Case R 1009/2016-1

 

BR IP Holder LLC
130 Royall Street Canton, Massachusetts 2021 United States of America	Opponent / Appellant

represented by REDD SOLICITORS LLP, 22 Tudor Street, EC4Y 0AY London, United Kingdom

v

 

Greyleg Investments Limited
Myrtle House, Ham Street, Baltonsborough Baltonsborough, Somerset BA68PN United Kingdom	Applicant / Respondent

 

APPEAL relating to Opposition Proceedings No B 1 741 605 (European Union trade mark application No 9 275 678)

THE FIRST BOARD OF APPEAL

composed of Th. M. Margellos (Chairperson), Ph. von Kapff (Rapporteur) and C. Rusconi (Member)

Registrar: H. Dijkema

gives the following

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Decision

Summary of the facts

1. By an application filed on 27 July 2010 and claiming the seniority of a national registration of 22 September 2000 No 2 229 658 in Great Britain, Greyleg Investments Limited (‘the applicant’) sought to register the word mark

HOKEY POKEY

for the following list of goods:

Class 30 – Confectionery.

The application was published on 4 August 2010.

2. On 2 November 2010, BR IP Holder LLC (‘the opponent’) filed an opposition against the registration of the published trade mark application for all the above goods. The grounds of opposition were those laid down in Article 8(4) EUTMR.
3. The opposition was based on the earlier non-registered sign

HOKEY POKEY

used in the course of trade by the opponent in the United Kingdom since 1997, in relation to

Confectionery, namely ice cream.

4. By decision of 24 May 2012 (‘the contested decision’), the Opposition Division dismissed the opposition, taking the view that the evidence adduced by the applicant, although showing that the earlier sign had been used to a certain extent, nevertheless was insufficient to establish use ‘of more than mere local significance’ within the meaning of Article 8(4) EUTMR.
5. On 11 June 2012, the opponent filed a notice of appeal, followed by a statement of grounds on 24 September 2012, requesting the Board to annul the contested decision, uphold the opposition and order the applicant to bear the costs.
6. On 22 November 2013, the Fourth Board of Appeal in the appeal No R 1091/2012-4 dismissed the appeal, whilst indicating that it had reached the same conclusion but on the basis of a different reasoning, namely that the opponent had not proven that it held an earlier absolute right giving it the right to prohibit the use of the contested mark.
7. On 27 January 2014, the opponent lodged at the Registry of the General Court an Application for annulment within the meaning of Article 65 EUTMR. The opponent requested the Court to annul the contested decision and order the applicant to bear the cost of the proceedings. The opponent put forward a single plea, namely the alleged infringement by the contested decision of Article 8(4) EUTMR.
8. On 21 January 2016 the General Court in its judgement annulled the Decision of the Fourth Board of Appeal of 22 November 2013 because of inconsistencies found in the reasoning of the mentioned decision (21/01/2016, T62/14, HOKEY POKEY, EU:T:2016:23).
9. On 6 June 2016, the Presidium of the Boards of Appeal referred the case to the First Board of Appeal under No 1009/2016-1.
10. On 6 January 2017, the Office was informed by the opponent that it withdraws and abandons its opposition together with the appeal 1009/2016-1. Both parties confirmed in the same writ that no award of costs shall be made.

Reasons

11. Article 58 EUTMR provides that an appeal before the Board has suspensive effect. It follows that an opposition may be withdrawn at any moment before the decision on the appeal becomes final.
12. The Board hereby takes note of the withdrawal of the opposition and that, as a consequence, the appeal and opposition proceedings are terminated. Following the withdrawal of the opposition, the contested decision cannot take effect.
13. The Board also takes note of the agreement on costs between the parties in accordance with Article 85(5) EUTMR.

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Order

On those grounds,

THE BOARD

hereby:

1. Takes note of the withdrawal of the opposition;
2. Declares the opposition and appeal proceedings closed;
3. Takes note of the agreement on costs.

 

 

 

 

 

 

Signed   Th. M. Margellos

Signed   Ph. von Kapff

Signed   C. Rusconi

 

 

Registrar:   Signed   H.Dijkema