OPPOSITION No B 2 383 209

Naazneen Investments Limited, Griva Digheni ave., Panagides Bldg, 2nd floor/Office 3, Limassol, Cyprus (opponent)

a g a i n s t

Escola De Natação e Ginastica Bioswin Ltda, Av Paulista, 2073, Andar 17 Horsa I Conj 1703, São Paulo, Brasil (applicant), represented by Cabinet Lavoix, 2 Place d' Estienne d'Orves, 75009 Paris, France (professional representative).

On 17/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 383 209 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 714 011011 for the figurative mark ‘  ’, namely against all the goods in Class 32. The opposition is based on European Union trade mark registration No 781 153 for the word mark ‘SMART WATER’. The opponent invoked Article 8(1)(b) EUTMR.

CEASING OF EXISTENCE OF THE EARLIER EUROPEAN UNION TRADE MARK REGISTRATION ON WHICH THE OPPOSITION IS BASED

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:

(a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the European Union trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:

1. EU trade marks;

[…].

Therefore, the legal basis of the opposition requires the existence and validity of an earlier right within the meaning of Article 8(2) EUTMR.

On 22/07/2014, the opponent filed a notice of opposition against the registration of European Union trade mark application No 12 714 011 claiming as the basis of the opposition one earlier mark, namely European Union trade mark registration No 781 153 (hereinafter referred to as the ‘Earlier Mark’).

On 13/08/2014, the opponent was notified that the opposition has been found admissible insofar as it was based on the Earlier Mark and was given two months, commencing after the ending of the cooling-off period, to complete the opposition by furnishing facts, evidence and arguments. On the same day, the Office informed the parties that the Earlier Mark is subject to cancellation proceedings and the opposition proceedings therefore are suspended until a final decision is taken on the cancellation. On 18/05/2011 the Cancellation Division had decided that the Earlier Mark was revoked as of 03/07/2009.

The decision of the Cancellation Division to revoke the Earlier Mark has been confirmed by the Court of Justice of the European Union on 17/03/2016.

On 04/05/2016 the opponent was notified that the opposition proceedings are being resumed and was given two months to inform the Office whether or not it maintains the opposition. This time limit expired on 09/07/2016. The opponent did not reply.

As it is apparent from the facts exposed above, the Earlier Mark ceased to exist retroactively as of 03/07/2009 and thus cannot constitute a valid trade mark on which the opposition filed on 22/07/2014 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 above mentioned 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

Oana-Alina STURZA

Volker Timo MENSING

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.