DECISION

of the Fourth Board of Appeal

of 27 November 2020

In Joint Cases R 1763/2020-4 and R 1773/2020-4

OneSpin Solutions GmbH
Nymphenburgerstraße 20a 80335 München Germany	EUTM Proprietor/ Appellant in R 1763/2020-4 Defendant in R 1773/2020-4

represented by Sonnenberg Harrison Partnerschaft mbB, Herzogspitalstraße 10a, 80331 München, Germany

v

OneSpan, naamloze vennootschap
Romeinsesteenweg 564C 1853 Strombeek-Bever Belgium	Cancellation Applicant/ Defendant in R 1763/2020-4 Appellant in R 1773/2020-4

represented by GEVERS, Brussels Airport Business Park, Holidaystraat 5, 1831 Diegem, Belgium

APPEAL relating to Cancellation Proceedings No 34 504 C (European Union trade mark registration No 4 952 818)

The Fourth Board of Appeal

composed of D. Schennen (Chairman and Rapporteur), C. Bartos (Member) and E. Fink (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 10/03/2006 and registered on 06/03/2008, the predecessor-in title of OneSpin Solutions GmbH (‘the EUTM proprietor’) obtained registration of the word mark

OneSpin 360

as a European Union trade mark for the following list of goods and services:

Class 9 – Scientific, measuring, signalling, and checking (supervision) apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; data carriers, recording discs; data processing equipment and computers; computer apparatus and software for processing data; computer hardware and computer software for use in the field of semiconductor production, in particular for verification purposes; verification software and devices, in particular in the field of semiconductor production; formal verification software;

Class 41 – Education; providing of training; arranging and conducting of workshops and training courses; computer training;

Class 42 – Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; development of verification software; licensing of computer software, in particular verification software; providing of computer software technical support services; application engineering; development, production of software for the formal verification of semiconductors and other technical components as well as the provision of any related services; creation, leasing, hiring and renting out of computer software.

2. On 01/04/2019, OneSpan, naamloze vennootschap (‘the cancellation applicant’) filed a request for a revocation of the registered mark against all the registered goods and services of the contested EUTM on the grounds of non-use pursuant to Article 58(1)(a) EUTMR.

3. By decision of 30/06/2020 (‘the contested decision’), the Cancellation Division partially revoked the contested mark as from 01/04/2019, namely for the follow­ing goods and services:

Class 9 – Scientific, measuring, signalling, and checking (supervision) apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; data carriers, recording discs; data processing equipment and computers; computer apparatus and software for processing data (except verification software); computer hardware and computer software for use in the field of semiconductor production (except verification software); verification devices, in particular in the field of semiconductor production;

Class 41 – Education; providing of training; arranging and conducting of workshops and training courses; computer training;

Class 42 – Scientific services and research and design relating thereto; technological services and research and design relating thereto (except those related to verification software); industrial analysis and research services; design and development of computer hardware and software (except verification software); licensing of computer software (except verification software); providing of computer software technical support services (except in relation to verification soft­ware); application engineering (except in relation to verification software); creation, leasing, hiring and renting out of computer software (except verification software).

The contested mark remained registered for the following goods and services:

Class 9 – Computer software for processing data, namely verification software; computer soft­ware for use in the field of semiconductor production, namely for verification purposes; verifica­tion software, in particular in the field of semiconductor production; formal verification software;

Class 42 – Technological services and research and design relating thereto, in relation to verifi­cation software; design and development of computer software, namely verification software; development of verification software; licensing of computer software, namely verification soft­ware; providing of computer software technical support services, in relation to verification soft­ware; application engineering, in relation to verification software; development, production and distribution of software for the formal verification of semiconductors and other technical compo­nents as well as the provision of any related services; creation, leasing, hiring and renting out of computer software, in relation to verification software.

Each party was ordered to bear its own costs.

4. On 27/08/2020, the EUTM proprietor (R 1763/2020-4) filed an appeal against the contested decision. It requested the Board to annul the contested decision as far as it revokes the contested mark for the above-mentioned goods and services in Classes 9, 41 and 42 and against the decision on costs.

5. On 28/08/2020, the cancellation applicant (R 1773/2020-4) filed an appeal against the contested decision. It requested the Board to annul the contested decision in part as far as the application for revocation was rejected for the following goods and services:

Class 9 – Computer software for processing data, namely verification software; computer soft­ware for use in the field of semiconductor production, namely for verification purposes; verifi­cation software, in particular in the field of semiconductor production; formal verification soft­ware;

Class 42 – Technological services and research and design relating thereto, in relation to verifica­tion software; design and development of computer software, namely verification software; development of verification software; licensing of computer software, namely verification soft­ware; providing of computer software technical support services, in relation to verification soft­ware; application engineering, in relation to verification software; development, production and distribution of software for the formal verification of semiconductors and other technical compo­nents as well as the provision of any related services.

6. On 23/10/2020 and 30/10/2020, the parties jointly requested the Boards of Ap­peal to suspend the appeal proceedings in view of their intention to settle the case amicably.

7. On 30/10/2020, the Registry of the Boards of Appeal notified the parties of the rejection of a suspension of the appeal as the suspension of the appeal at this stage of the proceedings is not possible according to Article 68 EUTMR.

8. On 05/11/2020, the cancellation applicant withdrew the application for revocation of EUTM No 4 952 818 due to the agreement concluded between the parties.

Reasons

9. Pursuant to Article 35(5) EUTMDR, the appeal proceedings must be joined because they are directed against the same decision of the Cancellation Division.

10. As a consequence of the withdrawal of the application for revocation, the cancel­lation and the appeal proceedings have become without purpose and shall be closed accordingly. The contested decision shall not become final, including its order on costs, and EUTM No 4 952 818 shall remain on the register for all the registered goods and services.

Costs

11. Pursuant Article 109(4) EUTMR, the party who terminates the proceedings by withdrawing the application for revocation shall bear the fees and costs incurred by the other party. Article 109(6) EUTMR provides that where the parties have concluded an agreement on costs, the Board shall take note of such agreement.

12. Notwithstanding that no agreement of costs has been submitted, the Board decides that each party shall bear its own costs since the withdrawal of the application for revocation is the result of an amicable settlement reached by the parties.

Order

On those grounds,

THE BOARD

hereby:

1. Joins appeal proceedings R 1763/2020-4 and R 1773/2020-4.

2. Takes note of the withdrawal of the application for revocation of European Union trade mark No 4 952 818.

3. Declares that European Union trade mark No 4 952 818 remains on the register for all the goods and services for which the mark is registered.

4. Declares the cancellation and the appeal proceedings closed.

5. Orders each party to bear its own costs of the cancellation and appeal proceedings R 1763/2020-4 and R 1773/2020-4.

Signed D. Schennen

Signed C. Bartos

Signed E. Fink

Registrar: Signed H.Dijkema