NICOTECH | Decision 2442393

Date Published: Oct 1, 2017

OPPOSITION No B 2 442 393

Contraf-Nicotex-Tobacco GmbH, Herbststr. 8, 74072 Heilbronn, Germany (opponent), represented by Claus Blallert, Contraf-Nicotex-Tobacco GmbH, Herbststr., 474072 Heilbronn, Germany (employee representative)

a g a i n s t

Nicotech Sarl, 37 avenue de Toulouse, 34070 Montpellier, France (holder), represented by Cabinet Bouchara · Avocats, 17 rue du Colisée, 75008 Paris, France (professional representative).

On 13/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 442 393 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 international registration designating the European Union No 1 219 890, namely against all the goods and services in Classes 5, 9, 34 and 35. The opposition is based on European Union trade mark registration No 5 811 741. The opponent invoked Article 8(1)(a) and (b) and 8(5) EUTMR.

Nicotex
Earlier trade mark	Contested sign

SUBSTANTIATION

According to Article 41(1)(a) EUTMR, the proprietor of an earlier trade mark referred to in Article 8(2) EUTMR may file an opposition against the registration of a European trade mark application.

According to Article 8(2)(a) EUTMR an ‘earlier trade mark’ is defined as a trade mark with a date of application for registration which is earlier than the date of application for registration of the European trade mark, taking into account, where appropriate, of the priorities claimed in respect of those trade marks.

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

The opposition was filed on 24/04/2015. The opponent based it on all the goods in Classes 1, 5 and 34 covered by earlier European Union trade mark registration No 5 811 741.

On 24/10/2016 European Union trade mark registration No 5 811 741 was revoked in its entirety as of 03/06/2016. On 07/02/2017 the opponent was requested to inform the Office whether it maintains the opposition in view of the invalidity of the earlier EUTM registration and whether it intends to withdraw the opposition. The opponent was set a time limit of two months, until 07/04/2017, to submit its reply.

The opponent did not reply within the prescribed time limit.

Therefore, since the opposition was based on a EUTM registration, which as mentioned above, ceased to exist, the opposition has lost its legal basis and does not comply with the requirements of the abovementioned articles. 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 holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Marzena MACIAK

Liliya YORDANOVA

Gueorgui IVANOV

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.