CANCELLATION No 12 164 C (INVALIDITY)

Invacare UK Operations Limited, South Road, Bridgend Industrial Estate, Bridgend, Wales CF31 3PY United Kingdom (applicant), represented by Anthony Gregory Burrows, Business Centre West, Avenue One, Business Park, Letchworth Garden City, Hertfordshire SG6 2 HB, United Kingdom (professional representative)

a g a i n s t

Franz Harrer, c/o Harrer License & Marketing, Hochfellnstrasse 6, 83346 Bergen, Germany (EUTM proprietor).

On 17/01/2017, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods of European Union trade mark No 13 359 121 ‘comet’ (word mark), namely against all the goods in Classes 9 and 10. The application is based on European Union trade mark registration No 6 469 241 ‘COMET’ (word mark) for goods in Classes 10, 12 and 20. The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(a) and (b) EUTMR and Article 8(5) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant does not provide any facts and arguments in support of its application.

In his observations the EUTM proprietor requested the applicant to submit proof of use of the trade mark on which the application is based, namely European Union trade mark registration No 6 469 241. Furthermore, the EUTM proprietor analyses in detail the grounds on which the application for invalidity is based and requests the Office to reject the application and to order the applicant to bear the costs.

PROOF OF USE

According to Article 57(2) and (3) EUTMR (in the version in force at the time of filing of the invalidity application), if the EUTM proprietor so requests, the applicant shall furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the applicant cites as justification for its application, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. If, on the date of publication of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 42(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity shall be rejected.

The request of the EUTM proprietor has been filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the date of the application for a declaration of invalidity.

Following the request of the EUTM proprietor, on 10/06/2016 the Office gave the applicant three months to submit proof of use.

The applicant has not submitted any evidence concerning use of the earlier trade mark on which the application for invalidity is based. Nor has it argued that there are proper reasons for non-use.

According to Rule 40(6) EUTMIR, if the applicant does not submit such proof before the time limit expires, the Office shall reject the application.

Therefore, the application must be rejected pursuant to Article 57(2) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(iv) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein. In the present case the EUTM proprietor did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore it did not incur representation costs.

The Cancellation Division

Denitza STOYANOVA-VALCHANOVA

Plamen IVANOV

Adriana Pieternella VAN ROODEN

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.