OPPOSITION No B 1 570 467

Europroducciones TV, S.A.U., Virgilio, 5 - Ciudad de la Imagen, 28223 Pozuelo de Alarcón (Madrid), Spain (opponent), represented by Cuatrecasas Gonçalves Pereira Propiedad Industrial, S.R.L., C/ Almagro, 9, 28010 Madrid, Spain, (professional representative)

a g a i n s t

ITV Global Entertainment Ltd, 200 Gray's Inn Road, London WC1X 8HF, United Kingdom (applicant), represented by Olswang LLP, 90 High Holborn, London WC1V 6XX, United Kingdom, (professional representative).

On 27/10/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 570 467 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 Community trade mark application No 8 313 108, in Classes 38 and 41. The opposition is based on Spanish trade mark registrations No 2 222 976 and 2 222 977. The opponent invoked Article 8(1)(b) CTMR.

PASA PALABRA	PASAPALABRA
Earlier trade marks	Contested sign

CEASING OF EXISTENCE OF THE EARLIER SPANISH TRADE MARK REGISTRATIONS ON WHICH THE OPPOSITION IS BASED

According to Article 41(1)(a) CTMR, the proprietor of earlier trademarks referred to in Article 8(2) may file an opposition to the registration of a Community trade mark application on the grounds that it may not be registered under Article 8.

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

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

(ii) Trademarks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property;

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

On 28/10/2009, the opponent filed a notice of opposition against the registration of Community trade mark application No 8 313 108 claiming as the basis of the opposition two earlier Spanish trade mark registrations No 2 222 976 and 2 222 977 (hereinafter referred to as the ‘earlier marks’).

On 4/6/2010, the applicant asked for a suspension of the opposition, informing that he had filed a claim in the Spanish courts to seek cancellation of both Spanish earlier marks. On 7/6/2010, the Office submitted such communication to the opponent and suspended the opposition proceedings.

On 23/1/2013, the Office requested the applicant to inform if a final decision had been taken by the Spanish Commercial Court.

On 18/2/2013, the applicant informed that it was waiting for the appeal of the decision. The Office submitted a copy of such communication to the opponent on 21/2/2013.

On 10/6/2013, the applicant submitted a copy of the Spanish Court Decision (Audiencia Provincial de Madrid, Sentencia 22/4/2013, Apelación Nº 90/2012, procedimiento de origen Juicio Ordinario nº 370/2010). In this decision the Spanish Appeal Court – Audiencia Provincial de Madrid - confirmed the Commercial Court’s Decision, declaring that both Spanish marks were filed in bad faith and annulled. On 21/6/2013, the Office submitted such communication to the opponent and resumed the opposition proceedings.

On 31/7/2013, the opponent informed the Office that he had filed an appeal to the Spanish Supreme Court against the decision of the Spanish Appeal Court. The Office submitted such communication to the applicant on 7/8/2013, and suspended again the opposition proceedings.

On 5/5/2015, the applicant submitted to the Office a copy of the Spanish Supreme Court’s decision confirming that both Spanish marks were filed in bath faith and cancelling the registration of both marks. The Office submitted the documents to the opponent on 3/6/2015.

On 7/7/2015, the Office resumed the Opposition proceedings informing the opponent of the invalidity of both earlier Spanish trade marks in accordance with the Spanish Supreme Court’s decision attached to the communication.

On 6/10/2015, the Office communicated to both parties that in the absence of any reply from the opponent, a ruling will be given on the opposition.

.

In the present case and as the applicant correctly pointed out, the earlier marks are no longer in force.

As it is apparent from the facts exposed above, the earlier Spanish trade marks do no longer exist and, consequently, cannot constitute valid earlier rights on which the opposition can be based within the meaning of Article 41(1)(a) CTMR and Article 8(2) CTMR.

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) CTMR, 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 (7)(d)(ii) CTMIR, 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

Richard BIANCHI

Claudio MARTINEZ MÖCKEL

Justas IVANAUSKAS

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.