CANCELLATION No C 25 981 (INVALIDITY) 

 

KLK Forte Industry, Inc. Dba Honey Punch, 1535 Rio Vista Avenue, 90023 Los Angeles, California, United States of America (applicant),

 

a g a i n s t

 

David Hill, UNIT B 248-250 Riverside Business Centre, Bendon Valley, SW18 4UQ London, United Kingdom  (EUTM proprietor), represented by Stobbs, Widenmayerstr. 34, 80538 Munich, Germany (professional representative).

On 07/06/2021, the Cancellation Division takes the following

 

 

DECISION

 

 

1.	The application for a declaration of invalidity is rejected as inadmissible.

 

2.	The applicant bears the costs, fixed at EUR 450.

 

 

REASONS

 

On 30/07/2018, the applicant filed a request for a declaration of invalidity against European Union trade mark No 13 786 108 HONEYPUNCH (word mark) (the EUTM), filed on 02/03/2015 and registered on 22/07/2015. The request is directed against all the goods covered by the EUTM, namely:

 

Class 18: Leather and imitations of leather; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; Luggage, bags and wallets; Rucksacks; Backpacks; Handbags; Purses; Umbrellas; travelling bags; leather bags; sports bags; parts and fittings for all the aforesaid goods.

Class 25: Clothing, footwear, headgear; Clothes for sports; Sports footwear; Boxing shoes; parts and fittings for all the aforesaid goods.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; Sports articles, equipment and apparatus; Gymnastic and sporting articles; Protective padding for sports; Boxing gloves; Punching balls; Punching bags; Boxing pads; hook and jab pads for boxing; Skipping ropes; Boxing head guards; parts and fittings for all the aforesaid goods.

The applicant invoked Article 59(1)(b) EUTMR.

GROUNDS FOR THE DECISION

 

According to Article 119(2) EUTMR, natural or legal persons not having either their domicile or their principal place of business or a real and effective industrial or commercial establishment in the EEA must be represented before the Office in accordance with Article 120(1) EUTMR in all proceedings established by this Regulation, other than in filing an application for a European Union trade mark. 

 

Where a party to proceedings before the Office failed to appoint a representative within the meaning of Article 120(1) EUTMR in the application or request, or where compliance with the representation requirement ceases to exist at a later stage (e.g. where the representative withdraws) the legal consequences depend on the procedural position of the party and the nature of the proceedings concerned.

In cancellation proceedings, where representation is mandatory pursuant to Article 119(2) EUTMR and the cancellation application does not contain the appointment of a representative, the Office will find a relative admissibility deficiency which the applicant will be invited to remedy (Articles 12(1)(c)(ii) and 15(4) EUTMDR).

When the cancellation application does contain the appointment of a representative but said representative subsequently resigns during the course of the proceedings, the Office will invite the applicant from outside the EEA to appoint a representative within a specified time limit. If the applicant fails to do so, the application will be rejected as inadmissible (supervening inadmissibility cause).

In the present case, the applicant does not have its domicile or principal place of business or a real and effective industrial or commercial establishment in the EEA, and therefore representation is mandatory.

In the application for a declaration of invalidity filed on 30/07/2018, the applicant did appoint a professional representative in accordance with Article 120(1) EUTMR. On 13/08/2018, the application for invalidity was found to be admissible and notified to the EUTM proprietor. The applicant’s representative resigned on 10/08/2020.

 

On 15/10/2020, the Cancellation Division sent a communication to the applicant inviting it to appoint a new representative within a specified time limit, failing which the application would be rejected as inadmissible.

The applicant did not appoint a new representative within the specified time limit.

Therefore, the application must be rejected as inadmissible.

 

COSTS

 

Given that, in the present case, the application for a declaration of invalidity had already been notified to the EUTM proprietor, and thus the adversarial part had already started, on 13/08/2018, i.e. before the date on which the present decision is taken, the conditions foreseen in Article 15(5) EUTMDR are not fulfilled, and a decision on costs must be taken.

According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(ii) 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. 

 

 

 

The Cancellation Division

 

Frédérique SULPICE

Richard BIANCHI

Zuzanna STOJKOWICZ

 

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 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.