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)
(ii) applications for a trade mark referred to in Article 8(2)(a) EUTMR, subject to
(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.