CANCELLATION No C 31 824 (INVALIDITY) 

 

AutoMax Group s.r.o., K Hájům 1233/2, Stodůlky, 155 00 Prague 5, Czech Republic (applicant), represented by Fröhlich & Partners, Advokátní Kancelář s.r.o., Spálená 84/5, 110 00 Praha 1, Czech Republic (professional representative)

 

a g a i n s t

 

GAT Automobiltechnologie Holding GmbH, Alt Saale 2, 07407 Uhlstädt-Kirchhasel, Germany (EUTM proprietor), represented by Pavel Panák, Ječná 243/39a, 120 00 Praha 2, Czech Republic (professional representative).

On 15/02/2021, 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, fixed at EUR 450.

 

REASONS

 

The applicant filed a request for a declaration of invalidity against European Union trade mark No 15 047 509 (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM in Classes 1, 3 and 4. The application is based on the Czech trade mark registration No 215 178 . The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(a) and (b) EUTMR.

  

SUMMARY OF THE PARTIES’ ARGUMENTS

  

The applicant argues that there exists a likelihood of confusion as the marks under comparison and the goods protected by them are identical.

 

The EUTM proprietor requests the applicant to submit proof of use of the earlier mark. Furthermore, it argues that the striking differences between the marks and the compared goods prevent the existence of any likelihood of confusion. Therefore, the application should be rejected as groundless.

The EUTM proprietor also claims that it filed a revocation action based on non-use against the earlier Czech trade mark before the Czech Intellectual Property Office. Consequently, it requests the suspension of the current invalidity proceedings until the national proceedings are concluded.

On 06/08/2020, upon request of the Office, the proprietor updates the status of the earlier mark and points out that the Czech Intellectual Property Office issued a decision in which the earlier Czech trade mark No 215 178 is annulled and it ceases to exist. This decision is final and cannot be appealed.

In its final observations, the applicant maintains its application for invalidity.

CEASING OF EXISTENCE OF THE EARLIER RIGHT

According to Article 60(1)(a) EUTMR, ‘an EU trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings:

(a) where there is an earlier trade mark as referred to in Article 8(2) and the conditions set out in paragraph 1 or 5 of that Article are fulfilled.'

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 application 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 application 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 application 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).

In the present case, the application for a declaration of invalidity is based on the Czech trade mark registration No 215 178 .

The EUTM proprietor claims that it filed a revocation action based on non-use against the earlier Czech trade mark before the Czech Intellectual Property Office. Consequently, it requests the suspension of the current invalidity proceedings. In support of its claim, the proprietor filed the following evidence:

Enclosures No 1-2: A document in Czech which refers to the revocation action based on non-use received by the Czech Intellectual Property Office on 23/11/2018 and filed by the proprietor against the earlier Czech trade mark No 215 178 together with an English translation of the relevant parts of the revocation action.

Enclosures No 3-4: An extract from the Czech Intellectual Property Office’s Registry regarding the Czech trade mark No 215 178 and a partial translation into English which proves that the above mentioned revocation proceedings against this trade mark are pending.

Enclosures No 5-6: A copy of the Czech Trademark Act No. 441/2003 Coll. valid at the filing date of the revocation action and a translation into English.

Enclosures No 7-8: A letter from the Czech Intellectual Property Office’s dated 22/03/2019 confirming that the abovementioned revocation proceedings before the Czech Intellectual Property Office are pending and that the Czech trade mark No 215 178 is contested for all the registered goods together with an English translation of the relevant parts of it.

Enclosure No 9: A document in Czech which, according to the proprietor, refers to the Czech Trademark Act No. 441/2003 Coll. (currently valid, as of 01.01.2019), which proves that the legal grounds of the above mentioned revocation action - as set forth in Sec. 31 - still exist.

Upon request of the proprietor, the Office, in the communication letter dated 28/03/2019, suspended the invalidity proceedings because a revocation action was filed against the earlier mark No 215 178 and communicated to the parties that the suspension would last until a final decision was taken in the proceedings that had led to the suspension.

On 06/08/2020, the proprietor informed the Office that the appeal issued on 28/07/2020 against the decision of the Czech Office was rejected and that the appealed decision of 27/04/2020 was confirmed. This decision is final and cannot be appealed. Therefore, the earlier Czech trade mark No 215 178 is annulled and it ceases to exist.

In support of it, it files the following evidence:

Enclosure No 10: a copy of the decision from the Czech Intellectual Property Office of 27/04/2020 declaring the revocation of the earlier Czech mark, along with an English translation of the relevant parts thereof;

Enclosure No 11: the Decision of 28/07/2020 issued by the President of the Czech Intellectual Property Office on the appeal of the abovementioned decision, along with English translation of the relevant parts thereof;

Enclosure No 12: an extract from the Czech Intellectual Property Office database showing that the Czech trade No 215 178 is cancelled.

In view of this, the applicant was requested to inform the Office whether it maintained the application for invalidity. The applicant did not withdraw the application since it claims that the decision from the Czech Intellectual Property Office is not final as it has filed a lawsuit before he Municipal Court in Prague on 17/09/2020 where the case is pending.

However, the applicant did not submit any evidence of the said lawsuit. Consequently, it was informed by the Office that it would take a decision rejecting the application as unfounded.

As it is apparent from the arguments and evidence presented above, the earlier mark No 215 178 was cancelled with decision of the Czech Intellectual Property Office on 27/04/2020 which is now final. This is also apparent from the Czech Intellectual Property Office’s online database, accessible through TMVIEW, which the applicant accepted as source for the substantiation of the earlier mark.

In this case, as the earlier mark ceased to exist and thus cannot constitute a valid trade mark on which the application can be based within the meaning of Article 60(1)(a) EUTMR and Article 8(2) EUTMR, the application must therefore be rejected as unfounded.

COSTS

 

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

 

Maria Belén IBARRA DE DIEGO

Carmen SÁNCHEZ PALOMARES

Natascha GALPERIN

 

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.