Decision

of the Fourth Board of Appeal

of 2 July 2015

In Case R 715/2014-4

Aldi Einkauf GmbH & Co. KG
Eckenbergstr. 16 A D-45307 Essen
Germany	Appellant / Applicant

represented by SCHMIDT, VON DER OSTEN & HUBER, Rechtsanwälte Steuerbe­rater Partnerschaft mbB, Haumannplatz 28, D-45130 Essen, Germany

v

SAS VIBEL
40, route de Vézelay F-89460 Bazarnes
France	Respondent / Opponent

represented by T MARK CONSEILS, 31, rue Tronchet, F-75008 Paris, France

APPEAL relating to Opposition Proceedings No B 2 004 615 (Community trade mark application No 10 198 323)

THE FOURTH BOARD OF APPEAL

composed of D. Schennen (Chairman and Rapporteur), E. Fink (Member) and L. Marijnissen (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By application filed on 16.8.2011 and published on 17.1.2012, the appellant sought to register the word mark

Vibelle

as a Community trade mark for a range of goods and services in various Classes.

2. Notice of opposition was filed, which was directed only against the goods in Class 20. The respondent invoked a likelihood of confusion (Article 8(1)(b) CTMR) with its earlier Community trade mark No 4 847 877

VIBEL

registered on 30.1.2007 for, among others, ‘goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics’ in Class 20.

3. In the course of the opposition proceedings, the applicant limited the list of goods in Class 20 from ‘furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; changing mats’ to ‘changing mats’ and also requested that the opponent prove use of the earlier mark.

4. On 27.2.2014, the Opposition Division took a decision to uphold the opposition, to reject the contested CTM application for ‘changing mats’, and to order the applicant to bear the costs. The applicant’s goods ‘changing mats’ were found identical to the opponent’s goods (as indicated in paragraph 3). The conflicting signs were found similar. The Opposition Division observed that the applicant’s request for proof of use was inadmissible because the earlier mark was not yet registered for more than five years.

5. The applicant filed a notice of appeal, in due time. In the statement of grounds of appeal it disputed an identity of the conflicting goods and services as well as a similarity of the signs. The applicant also requested the suspension of the appeal proceedings in view of a request for revocation it had filed against the earlier CTM on 26.3.2014.

6. The opponent did not file observations. The appeal proceedings were not sus­pended.

7. By its decision of 20.2.2015 in Case No 9176 C, the Cancellation Division revoked the CTM No 4 847 877 for lack of genuine use (Article 51(1)(a) CTMR). That decision has become final. On 21.5.2015, the revocation was recorded in the Register of Community Trade Marks (Article 57(6) CTMR).

Reasons

8. As the applicant could not request proof of use under Article 42 (2) CTMR in the present proceedings, it decided to file a separate request for revocation for non-use against the earlier CTM.

9. On the basis of that request, the Cancellation Division has revoked the earlier CTM, and the CTM has been removed from the Register of Community Trade Marks.

10. At the date of today the sole earlier mark on which the opposition was based is no longer in force. The opposition has become unfounded. Whether or not the revo­cation of the earlier mark took effect before or after the contested decision was taken, is immaterial.

11. The scope of the appeal is limited to the goods ‘changing mats’, which are the only contested goods after the applicant has deleted all other goods from Class 20. The opposition against these goods has become unfounded. The con­tested decision shall be annulled and the contested CTM application may proceed to registration for ‘changing mats’ as well as for any of the other goods and ser­vices which were not opposed.

Costs

12. In the appeal proceedings, the respondent (opponent) is the losing party within the meaning of Article 85(1) CTMR, as the opposition is unsuccessful.

13. For the opposition proceedings, the cost decision must compare the opposed goods versus the goods which now may proceed to registration. Part of the con­tested goods in Class 20 were withdrawn during the opposition proceedings and to that part the applicant is the losing party pursuant to Article 85(3) CTMR. In sum, the applicant (appellant) is only partly successful. The Board orders that for the opposition proceedings each party shall bear its own costs pursuant to Arti­cle 85(2) CTMR.

Fixing of Costs

14. Pursuant to Article 85(6) CTMR and Rule 94(6), (7) CTMIR, the Board fixes the costs to be reimbursed. These costs are fixed at EUR 550 for the appellant’s rep­resentation in the appeal proceedings pursuant to Rule 94(7)(d)(v) CTMIR and at the appeal fee of EUR 800 paid by the appellant pursuant to Rule 94(6) CTMIR, in total EUR 1,350. For the opposition proceedings, no costs are to be fixed.

Order

On those grounds,

THE BOARD

hereby:

1. Annuls the contested decision;

2. Rejects the opposition;

3. Orders that the respondent shall bear the costs of the appeal proceedings and that each party shall bear its own costs incurred in the opposition proceedings;

4. Fixes the total amount of costs to be reimbursed by the respondent to the appellant for the opposition and appeal proceedings at EUR 1,350.

Signed D. Schennen

Signed E. Fink

Signed L. Marijnissen

Registrar: Signed H.Dijkema