OPPOSITION No B 2 451 063

Bold International FZCO, P.O. Box 261691 Jafza, Dubai, United Arab Emirates (opponent), represented by Withers & Rogers LLP, 4 More London Riverside, London SE1 2AU United Kingdom (professional representative)

a g a i n s t

Kohler CO., 444 Highland Drive, 53044 Kohler, United States (applicant), represented by FRKelly, 27 Clyde Road, Ballsbridge, Dublin 4, Ireland (professional representative).

On 19/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 451 063 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 13 320 213, namely against all the services in Class 35. The opposition is based on European Union trade mark registration No 10 385 979. The opponent invoked Article 8(1)(b) EUTMR.

	BOLD
Earlier trade mark	Contested sign

CEASING OF EXISTENCE OF THE EARLIER RIGHT

According to Article 46(1)(a) EUTMR, 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 18/12/2014, the opponent filed a notice of opposition claiming as the basis of the opposition European Union trade mark registration No 10 385 979.

In the present case, the opposition is based solely on European Union trade mark registration No 10 385 979, which was filed on 02/11/2011 and registered on 31/03/2016.

However, European Union trade mark registration No 10 385 979 was cancelled with decision of 09/06/2017 which is now final.

As it is apparent from the facts stated above, the earlier mark ceased to exist and thus cannot constitute a valid trade mark on which the opposition can be based within the meaning of Article 46(1)(a) EUTMR and Article 8(2) EUTMR.

In view of this, the opponent was requested to inform the Office whether it maintained the opposition. The opponent did not reply to this notification.

The opposition must therefore be rejected as unfounded as far as it is based on this earlier mark.

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

Edith Elisabeth VAN DEN EEDE

Jose Maria FERNANDEZ RUEDA

Olga VALDELOMAR CRESPO

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.