OPPOSITION No B 2 709 841

Hugworld International Distributions, S.L., Calle Ochandiano, 6 – 2ª Plta., 28023 Madrid, Spain (opponent), represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º dcha., 28001 Madrid, Spain (professional representative)

a g a i n s t

J. Wagner GmbH, Otto-Lilienthalstr. 18, 88677 Markdorf, Germany (applicant), represented by Otten Roth Dobler & Partner mbB Patentanwälte, Grosstobeler Str. 39, 88276 Ravensburg/Berg, Germany (professional representative).

On 22/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 709 841 is rejected.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 131 352, namely in Classes 3 and 5. The opposition is based on European Union trade mark application No 15 055 569. The opponent invoked Article 8(1)(b) EUTMR.

Earlier trade mark	Contested sign

CEASING OF EXISTENCE OF EARLIER MARK, EUTM NO 15 055 569

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 8(5);

[…].

According to Article 8(2) EUTMR, for the purposes of the aforementioned paragraph 1, ‘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 into account, where appropriate, of the priorities claimed in respect of those marks, 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.

The earlier trade mark application was withdrawn on 05/09/2016. The Office sent a letter to the opponent on 07/12/2016 informing it of the possibility of withdrawing the opposition on or before 12/02/2017. No such withdrawal was received.  

As it is apparent from the facts exposed above, the earlier mark ceased to exist and thus cannot constitute a valid trade mark on which the opposition can be based within the meaning of Article 41(1)(a) EUTMR and Article 8(2) EUTMR.  

Therefore, the present opposition does not have a legal basis and, accordingly, does not comply with the requirements of the above mentioned legal provisions.

The opposition must therefore 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

Martin EBERL

Frank MANTEY

Vanessa PAGE

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.