OPPOSITION DIVISION
OPPOSITION No B 2 057 597
KC Bulgaria EOOD, 48 Simeonovsko Shousse Blvd., 1700 Sofia, Bulgaria
(opponent),
a g a i n s t
Casite Intraco LLC, 530 Stepehson Highway, Troy, MI 49083, United States of
America (applicant), represented by Ivan Nikolov Ivanov, IP Consulting Ltd., 6-8
Mitropolit Kiril Vidinski Str., vh. 8, Floor 2, Office 2, 1164 Sofia, Bulgaria (professional
representative).
On 24/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 057 597 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise
REASONS
Initially, the opponent filed an opposition against all the goods of European Union
trade mark application No 10 674 745 for the figurative mark ‘ ’ in
Classes 1, 3 and 4. After Decision No B 2 044 314 the contested European Union
Trade Mark Application was partially rejected, therefore, at the moment of taking this
decision the opposition is directed against all the remaining goods in Classes 1 and
3. The opposition is based on Bulgarian trade mark registration No 68 992 for the
figurative mark ‘ ’ registered for goods in Classes 1, 3 and 4. The
opponent invoked Article 8(1)(a) EUTMR.
Decision on Opposition No B 2 057 597 page: 2 of 3
CEASING OF EXISTENCE OF THE EARLIER RIGHT
According to Article 46(1)(a) EUTMR, within a period of three months following the
publication of an EUTM 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:
(a) 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);
[…].
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 ceases to exist
(e.g. because it has been declared invalid or it has not been renewed), the final
decision cannot be based on it. 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 ceases to have effect does not matter. Since the EUTM application
and the earlier right that has ceased to have effect cannot coexist any more, 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 07/08/2012, the opponent filed a notice of opposition. The opposition was based
exclusively on Bulgarian trade mark registration No 68 992.
On 22/05/2013, the Office informed the opponent that it had suspended the
opposition proceedings at the applicant’s request, because the earlier right on which
the opposition is based was pending under cancellation proceedings.
On 20/06/2017, the applicant informed the Office that the Bulgarian trade mark No
68 992 had been cancelled. An excerpt from the Bulgarian Patent Office Registry
accompanied by an English translation was provided.
On 05/07/2017, the opponent was notified that the opposition proceedings were
being resumed and it was given two months to inform the Office whether or not it
maintained the opposition. It was also mentioned that if it does not withdraw its
opposition by the time limit given, the Office would issue a decision rejecting the
opposition as unfounded. This time limit expired on 17/09/2017. The opponent did not
reply to this notification.
Decision on Opposition No B 2 057 597 page: 3 of 3
As it is apparent from the facts stated 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 46(1)(a) EUTMR and Article 8(2) EUTMR.
The opposition must therefore be rejected as unfounded.
COSTS
According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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
Solveiga BIEZA
Maria Clara IBAÑEZ
FIORILLO
Orsola LAMBERTI
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.