OPPOSITION No B 2 763 327

Top Technologies Limited, Ingles Manor Castle Hill Avenue, Folkestone Kent CT20 2RD, United Kingdom (opponent)

a g a i n s t

Aktiebolaget Trav och Galopp, 161 89 Stockholm, Sweden (applicant), represented by Advokatbyrån Gulliksson AB, Carlsgatan 3, 211 20 Malmö, Sweden (professional representative).

On 18/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 763 327 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 15 439 301 ‘TOP 4’ (word mark), namely against all the goods and services in Classes 16 and 41. The opposition is based on European Union trade mark application No 15 746 639 ‘TOP.COM’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

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:

a) 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).

In the present case, the opposition (submitted on 01/09/2016) is solely based on European Union trade mark application No 15 746 639, which was filed on 12/08/2016 (with the priority date of 11/04/2016).

However, the aforementioned earlier right was refused in total by the Office’s decision delivered on 10/09/2018 further to absolute grounds examination (Article 7 and Article 42(2) EUTMR). This decision is now final.

The opponent did not request a conversion of its earlier EUTMA into any national trade mark within the time limit prescribed for requesting conversion (within three months of the day on which the Office’s decision refusing the earlier EUTM became final), that is until 15/02/2019.

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 and did not withdraw the opposition.

The opposition must therefore be rejected as unfounded.

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

Renata COTTRELL

Dzintra BRAMBATE

Hanne Kirsten THOMSEN

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.