OPPOSITION No B 2 782 434

LG Electronics Inc., 128, Yeoui-daero, Yeongdeungpo-gu, 150721 Seoul, Republic of Korea, (opponent), represented by Mitscherlich, Patent- und Rechtsanwälte, PartmbB, Sonnenstraße 33, 80331 München, Germany (professional representative)

a g a i n s t

Samsung Electronics Co. Ltd., 129 Samsung-ro, Yeongtong-gu, Suwon-si, Gyeonggi-do, Republic of Korea (applicant), represented by Hoyng Rokh Monegier Partnerschaftsgesellschaft von Rechtsanwälten Advocaten und Avocats à la Cour mbB, Steinstr. 20, 40212 Düsseldorf, Germany (professional representative).

On 24/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 782 434 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trademark application No 15 574 601 “SAMSUNG QLED” (word mark), namely against all the goods in Class 9. The opposition is based on European Union trademark registration No 13 528 732 “QLED” (word mark). The opponent invoked Article 8(1)(a) and (b), and Article 8(5) 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 trademarks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trademarks, in respect of Article 8(1) and 8(5);

[…].

Furthermore, according to Article 8(2) EUTMR, ‘earlier trademark’ means:

(i) trademarks 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 trademark referred to in Article 8(2)(a) EUTMR, subject to their registration;

(iii) trademarks 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 05/10/2016, the opponent filed a notice of opposition claiming as the basis of the opposition European Union trademark registration No 13 528 732, which was filed on 04/12/2014 and registered on 27/03/2015.

However, European Union trademark registration No 13 528 732 was cancelled with decision No 14 157 of 29/08/2018 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, on 26/02/2019, 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.

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

Begoña URIARTE VALIENTE

Hanne Kirsten THOMSEN

Dzintra BRAMBATE

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.