OPPOSITION No B 1 717 456

Victor Lupu, 85 CPT Juverdeanu ST, Bucharest (Sector 2), Romania (opponent), represented by Paula Adriana Acsinte, 17, Decebal, BL S16 Entrance 2 Floor AP 30 Sector 3, 030964, Bucharest, Romania (professional representative)

a g a i n s t

Djili Soy OOD, Pliska 14 str. 7650 Dulovo Bulgaria (applicant), represented by Mariana Iorgulescu, str. Fagetului 144 bl.ST2,sc.B,ap.46, 900075 Constantza, Romania (professional representative).

On 09/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 717 456 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 European Union trade mark application No 9 018 219, namely all goods and services in Classes 29, 31, 32, 35 and 39. The opposition is based on the Romanian trade mark registration No 101 795 and international registration No 1 037 683 designating France, Slovakia, Italy, Bulgaria, Austria, Czech Republic, Hungary, Germany and Greece, each protected for goods and services in Classes 29, 31 and 35. The opponent invoked Article 8(1)(b)EUTMR.

DJILI
Earlier trade marks	Contested sign

CEASING OF EXISTENCE OF THE EARLIER RIGHTS

According to Article 46(1)(a) EUTMR (former Article 41 of Regulation 207/2009 in force when the opposition was filed), 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:

1. 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 31/08/2010, the opponent filed a notice of opposition claiming as the basis of the opposition the Romanian trade mark registration No 101 795 and international registration No 1 037 683 designating France, Slovakia, Italy, Bulgaria, Austria, Czech Republic, Hungary, Germany and Greece, which is based on the Romanian trade mark registration.

The Romanian trade mark registration has been a subject to national cancellation proceedings initiated on 12/03/2010. The trade mark has been cancelled by the judgement no 1248/21.06.2011 delivered in file no 12934/3/2010 by the Bucharest Court of Law. The appeals have been dismissed by the Bucharest Court of Appeal, as well as The High Court of Cassation and Justice. The decision is therefore final. The earlier Romanian trade mark has ceased to exist. The applicant also filed a TM View excerpt where the status of the mark is indicated as ‘ended’.

The international registration was based on the Romanian trade mark. It was registered on 13/01/2010. The designations in the international registration are governed by the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks adopted at Madrid on June 27, 1989, as amended on October 3, 2006 and on November 12, 2007 (referred to later as ‘Madrid Protocol’). According to Article 6(2) of the Madrid Protocol there is a dependency between the international registration and its basic registration for 5 years since the registration date of the international registration. Consequently, pursuant to Article 6(3) of the Madrid Protocol, if within these five years of dependency the basic registration is cancelled the protection resulting from the international registration can no longer be invoked. The same applies if the final decision in the proceedings which have led to the cancellation of the basic registration is issued after the expiry of the 5 year period, if the proceedings have been initiated during this period.

The cancellation proceedings which have led to the cancellation of the Romanian mark have been initiated on 12/03/2010, that is, within the 5 year dependency period of the international registration from its basic registration. The basic registration has been cancelled as a result of these proceedings; therefore, pursuant to Article 6(3) of the Madrid Protocol, the protection resulting from the international registration can no longer be invoked. The Opposition Division considers that this right has also ceased to have an effect. The opponent did not provide any information to the contrary. In fact, the opponent did not reply to the communication of the Office.

As it is apparent from the facts stated above, the earlier marks ceased to exist and thus cannot constitute valid trade marks 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.

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

Gueorgui IVANOV

Ewelina SLIWINSKA

Jakub MROZOWSKI

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.