OPPOSITION No B 2 159 971
Net Power and Light, Inc., 1169 Gorgas Avenue, Suite A, San Francisco, California 94129, United States of America (opponent), represented by Orrick, Herrington & Sutcliffe (Europe) Llp, 107 Cheapside, London EC2V 6DN, United Kingdom (professional representative)
a g a i n s t
Spin AG, Bischof-von-Henle Str. 2b, 93051 Regensburg, Germany (applicant), represented by Langpatent Anwaltskanzlei, Rosenheimer Str. 139, 81671 München, Germany (professional representative).
On 18/01/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 159 971 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the services of European Union trade mark application No 11 100 344 ‘SPIN’ (word mark), namely the services in Classes 35, 38, 42 and 45. The opposition is based on European Union trade mark application No 11 391 711 ‘SPIN’ (word mark). The opponent invoked Article 8(1)(a) and (b) EUTMR.
CEASING OF EXISTENCE OF THE EARLIER EUROPEAN UNION TRADE MARK APPLICATION NO 11 391 711 ON WHICH THE OPPOSITION IS BASED
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:
- 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);
[…].
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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:
- EU trade marks;
[…].
(b) applications for the trade marks referred to in subparagraph (a), subject to their registration.
Therefore, the legal basis of the opposition requires the existence and validity of an earlier right within the meaning of Article 8(2) EUTMR.
On 05/04/2013, the opponent filed a notice of opposition against the registration of European Union trade mark application No 11 100 344 claiming as the basis of the opposition one earlier mark, namely European Union trade mark application No 11 391 711 (hereinafter referred to as the ‘Earlier Mark’).
On 03/05/2013, the opponent was notified that the opposition has been found admissible insofar as it was based on the Earlier Mark and was given two months, commencing after the ending of the cooling-off period, to complete the opposition by furnishing facts, evidence and arguments. Following the extension of the cooling-off period, this time limit expired on 08/07/2015.
On 26/11/2015, the Office notified both parties that the opposition proceedings have been suspended ex oficio because the Earlier Mark did not mature into registration.
On 11/07/2016, the Opposition Division took a decision in opposition proceedings No B 2 165 549 by means of which it rejected the Earlier Mark in its entirety. The decision of the Opposition Division became final and binding, and, as a consequence, the Earlier Mark ceased to exist.
On 13/10/2016, the opponent was notified that the opposition proceedings are being resumed and was given two months to inform the Office whether or not it maintains the opposition. This time limit expired on 18/12/2016. The opponent did not reply.
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, 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
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Angela DI BLASIO |
Oana-Alina STURZA |
Ana MUÑIZ RODRIGUEZ |
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.