CANCELLATION No 14597 C (INVALIDITY)
Linde Aktiengesellschaft, Klosterhofstr. 1, 80331 München, Germany (applicant), represented by Becker & Kurig Partnerschaft Patentanwälte mbB, Bavariastr. 7, 80336 München, Germany (professional representative)
a g a i n s t
Nel Hydrogen A/S, Vejlevej 57400 Herning, Denmark (EUTM proprietor), represented by Gorrissen Federspiel Advokatpartnerselskab, Axeltorv 2, 1609 Copenhagen V, Denmark (professional representative).
On 11/11/2020 the Cancellation Division takes the following
1. The request for obtaining a decision on the merits is rejected.
2. The cancellation proceedings are closed.
3. Each party bears its own costs.
The applicant filed an application for a declaration of invalidity against European Union trade mark No 9 926 502 ‘H2Station’ (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, in Classes 4, 7 and 37.
LEGITIMATE INTEREST IN OBTAINING A DECISION ON THE MERITS
The cancellation request was submitted on 09/03/2017. On 25/04/2017, the Cancellation Division duly notified the EUTM proprietor of the application for a declaration of invalidity.
On 16/02/2018, after two rounds of observations, the Office considered the adversarial part of the proceedings closed.
On 03/10/2018, the Office decided to suspend the present proceedings because the contested EUTM had been partially revoked in the parallel proceedings, C 14596. The suspension was to last until a final decision had been reached in those proceedings.
On 01/04/2020, the Office decided to lift the suspension, since the appeal decision in relation to the partial revocation had become final. In the appeal proceedings, the EUTM was declared totally revoked by the decision of the Second Board of Appeal of 19/09/2019 in case R 2346/2018‑2.
According to Article 17(5) EUTMDR, where an EU trade mark is revoked or declared invalid in parallel proceedings, the proceedings must be closed except where Article 57(2) EUTMR applies or the applicant shows a legitimate interest in obtaining a decision on the merits.
On 01/04/2020, the Cancellation Division notified the applicant that the contested EUTM had been revoked and that it intended to close the proceedings unless the applicant expressly requested that the cancellation proceedings be continued and showed a legitimate interest in obtaining a decision on the merits.
On 20/04/2020, the applicant submitted its observations in which it requested that proceedings be continued and claimed a legitimate interest.
The reasons indicated by the applicant can be summarised as follows. The applicant has a legitimate interest in obtaining a decision as to whether or not the contested EUTM is distinctive or descriptive, since the applicant has the intention to use the contested sign. Therefore, a decision on the substance is necessary.
According to the Guidelines for Examination in the Office, Part D, Cancellation, the legitimate interest claimed by the applicant in these cases must be real, direct and present.
In the present case, the legitimate interest of the applicant is not real, direct or present. The applicant’s arguments only refer to the applicant’s possible use of the contested trade mark in the future.
In the light of the above, the Cancellation Division concludes that the applicant’s request for obtaining a decision on the merits should be rejected and that the present case should therefore be closed without such a decision, due to the revocation of the contested EUTM.
According to Article 109(5) EUTMR, in invalidity proceedings that do not proceed to judgment, the costs will be determined at the discretion of the Cancellation Division.
Since no decision on the substance was taken, it cannot be determined who the winning or losing party is. The Office concludes that it is equitable that each party should bear its own fees and costs.
The Cancellation Division
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.