CANCELLATION No C 44 929 (INVALIDITY) 

 

Infinity Foods Co-Operative Ltd., 25 North Road, BN1 1YA Brighton, United Kingdom (applicant), represented by Tennant Ip Limited, 10 Llanthewy Road, NP20 4JR Newport, United Kingdom (professional representative)

 

a g a i n s t

 

Virmina Trading Limited, 3, Michall Koutsofta, 3031 Limassol, Cyprus  (EUTM proprietor), represented by HGF BV, Gedempt Hamerkanaal 147, 1021 KP Amsterdam, The Netherlands (professional representative).

On 09/03/2021, the Cancellation Division takes the following

 

 

DECISION

 

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

 

2. Each party bears its own costs.

 

REASONS

 

On 10/07/2020, the applicant filed a request for a declaration of invalidity against European Union trade mark No 18 166 008 INFINITY (word mark) (the contested EUTM).

The request is directed against all the goods covered by the EUTM, namely coffee in Class 30.

The application is based on the following earlier rights:

 United Kingdom trade mark registration No UK00 002 500 511 Infinity, filed on 20/10/2008 and registered on 27/02/2009;

 United Kingdom trade mark registration No UK00 001 322 815, filed on 30/09/1987 and registered on 08/09/1989, for the figurative sign here below:

 United Kingdom trade mark registration No UK00 003 447 960 Infinity Coffee, filed on 29/11/2019 and registered on 21/02/2020;

 United Kingdom trade mark registration No UK00 003 304 382 INFINITY, filed on 17/04/2018 and registered on 28/09/2018. 

The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(a) and (b) EUTMR.

 

On 01/02/2020, the United Kingdom (UK) withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 60(1)(a) EUTMR in conjunction with Article 8(1)(a) and (b) EUTMR, worded in the present tense, must also be fulfilled at the time of taking the decision.

 

As the invalidity application no longer has a valid basis, it must be dismissed.

 

COSTS

 

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

 

As the termination of the proceedings is due to exceptional statutory reasons not attributable to any of the parties, it is equitable that each party bears its own costs.

 

 

The Cancellation Division

 

Jessica LEWIS

Pierluigi M. VILLANI

Ana MUÑIZ RODRIGUEZ

 

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.