OPPOSITION No B 1 948 234

Anheuser-Busch, LLC, One Busch Place, 63118, St. Louis, United States of America (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

a g a i n s t

Destouches SAS, 9 rue du Baron Chouard, 67700 Monswiller, France (applicant), represented by Michel Mall, 10 rue du Travail, 67000 Strasbourg, France (professional representative).

On 13/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 948 234 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

On 16/12/2011, the opponent filed an opposition against all the goods and services of European Union trade mark application No 8 962 508 for the word mark ‘The King of Wines’, namely against all the goods and services in Classes 21 and 35. The opposition is based on European Union trade mark registration No 54 478 for the figurative mark and United Kingdom trade mark registrations Nos 2 001 272 and 2 357 554, both for the word mark ‘KING OF BEERS’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

CEASING OF EXISTENCE OF THE EARLIER RIGHTS

On the validity of earlier UK trade mark registrations

On 01/02/2020, the United Kingdom withdrew from the European Union subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the United Kingdom. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(1) and (5) EUTMR, worded in the present tense, must also be fulfilled at the time of decision taking. It follows that United Kingdom trade mark registrations Nos 2 001 272 and 2 357 554, both for the word mark ‘KING OF BEERS’, no longer constitute a valid basis of the opposition.

The opposition must therefore be rejected as unfounded as far as it is based on these earlier marks.

On the ceasing of existence of earlier European Union trade mark registration

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)(a) EUTMR;

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

(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 16/12/2011, the opponent filed a notice of opposition claiming as the basis of the opposition, inter alia, European Union trade mark registration No 54 478 for the figurative mark , which was filed on 31/10/1994 (and registered on 01/04/1997).

However, that trade mark registration expired on 01/04/2016 and was not renewed within the due deadline or within the further six months following the day on which protection ended. It follows that the earlier European Union trade mark registration No 54 478 has ceased to exist and is not an ‘earlier trade mark’ within the meaning of Article 8(2) EUTMR.

As it is apparent from the facts stated above, the earlier mark ceased to exist and thus cannot constitute a valid trade mark on which the opposition can be based within the meaning of Article 46(1)(a) EUTMR and Article 8(2) EUTMR.

The opposition must therefore be rejected as unfounded as far as it is based on this earlier mark.

COSTS

According to Article 109(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 applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Helen Louise MOSBACK

Michal KRUK

Chantal VAN RIEL

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.