CANCELLATION No 7938 C (INVALIDITY)

Droujestvo s Ogranichena Otgovornost "Rezon", 11 A Oulitsa “Karnegi”, 1142 Sofia, Bulgaria (applicant)

a g a i n s t

Mobile.de GmbH, Marktplatz 1, 14532 Dreilinden, Germany (EUTM proprietor), represented by Beiten Burkhardt Rechtsanwaltsgesellschaft MBH, Kurfürstenstr. 72-74, 10787 Berlin, Germany (professional representative).

On 04/04/2016 the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against some of the services of European Union trade mark No 8 838 617 (fig.), namely against the services in Classes 35 and 42. The application is based on Bulgarian trade mark registration No 51 245 (fig.). The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1) (b) EUTMR.

PRELIMINARY REMARK

On 31/10/2013, the Cancellation Division rendered a decision which resulted in the rejection of the cancellation application as inadmissible pursuant to Article 53 EUTMR and Rule 37(b)(ii) EUTMIR on the grounds that the application did not contain particulars of the right on which the application was based and, neither did it submit particulars showing that the applicant was entitled to adduce the earlier right as grounds for invalidity. In particular, the original certificate of registration (and renewal) of the earlier Bulgarian trade mark was missing. This deficiency was not remedied before the expiry of the time limit set.

The decision was appealed and the Board of Appeal decided in case R 2529/2013‑1 on 13/11/2014. The Board’s decision annulled the contested decision and remitted the case to the Cancellation Division for further prosecution. The Board considered that the cancellation applicant had duly filed a copy of the certificate of the Bulgarian trade mark registration and a translation thereof within the accorded time limit. Thus, proving that at the date its application was filed, the earlier mark was in force and the admissibility requirements, set out in Rule 37(b)(ii) EUTMIR were clearly fulfilled. Moreover, the Board further noted that pursuant to Article 79 EUTMR, the Cancellation Division may request information and the production of documents in any proceedings before it, and it should have requested information on the renewal of the mark after the evidence of registration had been filed.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the EUTM proprietor’s mark is identical to the applicant’s mark and the services from classes 35 and 42 are identical to those of the earlier trade mark, which makes it probable that consumers will wrongfully perceive it as the earlier registered trade mark.

The EUTM proprietor requests the applicant to submit proof of use of its earlier trade mark and argues that it is the market leader not only in Germany, but also within the European Union regarding the market for ‘online car marketplaces’. Therefore, the applicant did not only copy the business model of the EUTM proprietor and its entire website design, but also its trade mark, so infringing the EUTM proprietor’s rights and acting in bad faith. Finally, according to the EUTM proprietor, the applicant never intended to actually use his trade mark and has never used it at any time.

In support of its observations, the EUTM proprietor filed, inter alia, the following evidence:

• Decision of the Regional Court of Hamburg, issuing a temporary injunction to the applicant for the current cancellation proceedings to use his trade mark .

• Letter from the Bulgarian Patent Office regarding the refusal to register a trade mark ‘MOBILE.de’ due to a previous application for a trade mark ‘mobile.de’, submitted by the applicant in the current cancellations proceedings.

PROOF OF USE

According to Article 57(2) and (3) EUTMR (as effective at the time of filing of the invalidity request), if the EUTM proprietor so requests, the applicant must submit proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier trade mark has been genuinely used in the territories in which it is protected and for the goods or services for which it is registered and which it cites as justification for its application, or that there are proper reasons for non-use. If, at the date on which the contested EUTM application was published, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions contained in Article 42(2) EUTMR were satisfied at that date.

According to the same provision, in the absence of such proof the application for a declaration of invalidity will be rejected.

The request has been filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the date of the application for a declaration of invalidity.

On 26/08/2015 the applicant was given three months to submit proof of use.

The applicant did not submit any evidence concerning use of the earlier trade mark on which the application for invalidity is based and neither has it argued that there are proper reasons for non-use either.

For the sake of completeness, it is noted that the Office received a letter from Ms. Margarita V. Harizanova on 21/12/2015, as well as from the applicant on 23/03/2016, mentioning that they did not receive any communication from the Office, including the proof of use request after receiving the notification of the decision of the Boards of Appeal dated 13/11/2014.

In this regard it should be noted that the representation of the applicant, carried out by Ms. Margarita V. Harizanova, has been limited to the proceedings before the Boards of Appeal related to the cancellation 7938 C, as seen from the individual authorisation dated 16/12/2013. Therefore, she is not considered as a representative before the Cancellation Division in the current proceedings and is not entitled to receive communications related to the actual cancellation proceedings 7938 C.

Moreover, on 26/08/2015 the Office duly informed the applicant about the request of proof of use and forwarded the relevant documents by registered mail. The Office has not been informed about any failure to deliver this mail. Therefore, the notification of 26/08/2015 is considered as delivered.

According to Rule 40(6) EUTMIR, if the applicant does not submit such proof before the time limit expires, the Office will reject the application.

Therefore, the application must be rejected pursuant to Article 57(2) and (3) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(iv) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Michaela SIMANDLOVA

Gailė SAKALAITĖ

Vanessa PAGE

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 shall be filed in writing at the Office within two months of the date of notification of this decision. It shall 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 shall 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 Cancellation 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.