DECISION

of the Fourth Board of Appeal

of 31 July 2015

In Case R 3225/2014-4

LABOREST Italia S.p.A. Via Vicinale di Parabiago, 22 I-20014 Nerviano Italy

Applicant / Appellant

represented by HOFFMANN EITLE Patent- und Rechtsanwälte PartmbB, Arabellastr. 30, D-81925 München, Germany

v

MSD International GmbH Weystrasse 20 CH-6000 Lucerne 6 Switzerland

Opponent / Respondent

represented by MERKENBUREAU KNIJFF & PARTNERS B.V., Leeuwenveldseweg 12, NL-1382 LX Weesp, The Netherlands

APPEAL relating to Opposition Proceedings No B 2 028 226 (Community trade mark application No 10 611 911)

The FOURTH Board of Appeal

composed of D. Schennen (Chairperson), F. López de Rego (Rapporteur) and C. Bartos (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 2 February 2012, LABOREST Italia S.p.A. (the applicant) sought to register the word mark

ESTEROL

for goods in Classes 3, 5 and 29.

2. On 20 June 2012, MSD International GmbH (the opponent), filed a notice of opposition against the goods in Class 5.

3. On 24 November 2014, the Opposition Division upheld the opposition for all the contested goods in Class 5 ordering the applicant to bear the costs.

4. On 19 December 2014, the applicant filed an appeal against the contested decision.

5. On 24 March 2015, the applicant limited the specification of goods by deleting all the goods in Class 5.

6. On 13 April 2015, the Registry of the Boards of Appeal confirmed that Class 5 had been removed from the list of goods.

Reasons

7. Given that the appeal and the opposition proceedings have become without purpose, the Board will declare the proceedings closed. The CTM application can proceed for the non-contested goods in Classes 3 and 29.

Costs

8. In accordance with Article 85(3) CTMR, the party who terminates the proceedings, by withdrawing in part its CTM application, shall bear the fees and costs incurred by the other party. As the applicant (appellant) terminated the proceedings, it shall bear the costs of the opponent (respondent).

Fixing of costs

9. Pursuant to Article 85(6) CTMR and Rule 94(7)(d)(i) and (vi) CTMIR, the Board fixes the amount of representation costs to be paid by the appellant to the respondent for the appeal proceedings at EUR 550. For the opposition proceedings the Opposition Division correctly fixed the costs and fees to be reimbursed by the appellant to the respondent at EUR 650. The total amount is EUR 1 200.

Order

On those grounds,

THE BOARD

hereby:

1. Accepts the restriction of the goods in Class 5 and allows the CTM application to proceed for the remaining goods in Classes 3 and 29;

2. Declares the opposition and appeal proceedings closed;

3. Orders the appellant to bear the costs of the appeal proceedings;

4. Fixes the total amount of costs to be paid by the appellant to the respondent with respect to the opposition and appeal proceedings at EUR 1 200.

Signed D. Schennen

Signed F. López de Rego

Signed C. Bartos

Registrar: Signed H.Dijkema