OPPOSITION No B 1 548 885

Willibrordus Augustinus van der Weide, Krivošt'anská 369, 072 22 Stráżske, Slovak Republic (opponent), represented by Ivan Regina, Plzenská 15, 040 11 Košice, Slovak Republic (professional representative)

a g a i n s t

Bestland AG, Altes Widalmi 6, 3216 Ried bei Kerzers, Switzerland (applicant), represented by Algemeen Octrooi- en Merkenbureau B.V., John F. Kennedylaan 2, 5612 AB Eindhoven, The Netherlands (professional representative).

On 17/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 1 548 885 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 8 157 257, namely those in Classes 1, 42 and 44. The opposition is based on European Union trade mark registration No 5 081 666. The opponent invoked Article 8(1) (b) EUTMR.

Condit	CONDIT
Earlier trade mark	Contested sign

CEASING OF EXISTENCE OF THE EARLIER EUROPEAN UNION TRADE MARK REGISTRATION NO 5 081 666

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

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

Further, according to Article 8(2) EUTMR, ‘earlier trade marks’ means:

(a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the European Union trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:

1. EU trade marks;

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

Furthermore, if in the course of the proceedings, the earlier right ceases to exist (for instance because it has been declared invalid or it has not been renewed), the final decision cannot be based on it. The opposition may only be upheld with respect to an earlier right which is valid at the moment when the decision is taken. Since the European Union trade mark application and the earlier right which has ceased to have effect cannot coexist anymore the opposition cannot be upheld to this extent (13/09/2006, T-191/04, Metro, EU: T: 2006:254, § 33 & 36).

If all the earlier rights (or the only earlier right like in the present case) on which an opposition is based cease to exist, the opponent will be granted the opportunity to withdraw its opposition. If it does not do so, the Office will take a decision rejecting the opposition.

In the present case the earlier trade mark on which the opponent based his opposition expired on 26/04/2016 and was not renewed within the due deadline or within the further six months following the day on which protection ended. Therefore, the mark was cancelled from the EUTM Register on 01/11/2016, with effect as from its expiration date.

On 28/03/017, the opponent was requested to inform the Office within the time limit of 27/05/2017, whether or not, despite the cease of existing of his trade mark, he maintained the opposition. The letter expressly indicated that, if the opponent did not withdraw the opposition within the time limit set, the Office would issue a decision rejecting the opposition as unfounded. The opponent did not reply to the request.

As it is apparent from the facts exposed above, the earlier mark does no longer exist and, consequently, 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 abovementioned 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, he 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

Mark KING

Ioana MOISESCU

Zuzanna STOJKOWICZ

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.