OPPOSITION No B 2 377 466

Evolve Sports & Designs, 6769, 8th Street, Buena Park, California 90620, United States of America (opponent), represented by Dolleymores, 9 Rickmansworth Road, Watford, Hertfordshire WD18 0JU, United Kingdom (professional representative)

a g a i n s t

Take-Two Interactive Software, Inc., 622 Broadway, 3rd Floor, New York, NY 10012, United States of America (applicant), represented by Fish & Richardson P.C., Highlight Business Towers, Mies-van-der-Rohe-Str. 8, 80807 München, Germany (professional representative).

On 17/02/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 377 466 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 12 620 811, namely against all the goods and services in Classes 9, 16, 25 and 41. The opposition is based on European Union trade mark application No 10 356 343. The opponent invoked Article 8(1)(b) EUTMR.

EVOLV
Earlier trade mark	Contested sign

CEASING OF EXISTENCE OF THE EARLIER RIGHT

According to Article 41(1)(a) EUTMR, within a period of three months following the publication of an EU trade mark 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);

[…].

Further, according to Article 8(2) EUTMR, ‘earlier trade marks’ means:

(i) trade marks with a date of application for registration which is earlier than the date of application of the contested mark, taking into account, where appropriate, of the priorities claimed in respect of those marks;

(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.

Furthermore, if, in the course of the proceedings, the earlier right ceases to exist (e.g. because it has been declared invalid, it has not matured to registration 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. Such a decision would be unlawful (13/09/2006, T‑191/04, Metro, EU:T:2006:254, § 33-36).

In the present case, the opponent filed a notice of opposition on 30/06/2014, claiming as the basis of the opposition European Union trade mark application No 10 356 343.

European Union trade mark application No 10 356 343 was refused in its entirety by the decision of 30/05/2016, B 1 982 993, which became final.

As is apparent from the above, the earlier mark has ceased to exist and thus cannot constitute a valid trade mark on which the opposition can be based within the meaning of Article 41(1)(a) EUTMR and Article 8(2) EUTMR.

Therefore, the present opposition does not have a legal basis and, accordingly, does not comply with the requirements of the abovementioned legal provisions.

The opposition must therefore be rejected as unfounded.

COSTS

According to Article 85(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 Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, 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

Rasa BARAKAUSKIENE

Birute SATAITE-GONZALEZ

Denitza STOYANOVA-VALCHANOVA

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 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 of appeal must 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 Opposition 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.