OPPOSITION No B 2 199 274
The Green Effort Limited, 20 - 22 Wenlock Road, London N1 7GU, United Kingdom (opponent), represented by Primus Omnium Consultant & Management Company Limited, 20 - 22 Wenlock Road, London N1 7GU, United Kingdom (professional representative)
a g a i n s t
Federation Internationale de L'automobile, 2, Chemin de Blandonnet, 1214 Vernier, Switzerland (applicant), represented by Noerr Alicante IP, S.L., Avenida México 20, 03008 Alicante, Spain (professional representative).
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against
some of the
goods and services of
trade mark application No
CEASING OF EXISTENCE OF THE EARLIER RIGHT(S)
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:
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).
On 21/06/2013, the opponent filed a notice of opposition claiming as the basis of the opposition European Union trade mark registration No 9 528 001 for the word mark ‘Formula E’ which was filed on 17/11/2010 and registered on 14/03/2011.
The earlier mark was transferred by the initial EUTM proprietor to the current proprietor and the transfer was recorded by the Office on 26/09/2014. The opponent´s representative was not changed.
The trade mark registration was revoked in its entirety with decision 12 701 C of 08/09/2016 which is now final (after the decision of the Second Board of Appeal No 1827/2016-2 of 11/09/2017, the appeal against the latter decision before the General Court and the Court of Justice having been dismissed).
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 07/11/2019, the Office sent a notification to the opponent (via its representative) requesting to inform the Office by 12/01/2020 whether it maintained the opposition. The opponent did not reply to this notification.
The opposition must therefore be rejected as unfounded.
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
Denitza STOYANOVA - VALCHANOVA
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.