CANCELLATION No 11 744 C (INVALIDITY)

Yue Jing, Group 3, Taisha Village, Nanming Town, Jianhe County, Guizhou Province, People’s Republic of China (applicant), represented by Casalonga Alicante, S.L., Avenida Maisonnave, 41-6C, 03003 Alicante, Spain (professional representative)

a g a i n s t

Klarus Lighting Technology (Hong Kong) Co., Limited, Unit 4, the Seventh Floor, Kaitu Building, No. 33, Mong Kok Road, Kowloon, Hong Kong, Special Administrative Region of Hong Kong of The People’s Republic of China (EUTM proprietor), represented by ZENZ Patentanwälte Partnerschaft mbB, Postfach 10 43 63, 45043 Essen, Germany (professional representative).

On 26/03/2019, the Cancellation Division takes the following

DECISION

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

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 12 123 717 (figurative mark), namely against all the goods in Class 11. The application is based on European Union trade mark No 10 325 934 (figurative mark). The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

On 07/09/2015 the applicant filed the application for declaration of invalidity against the EUTM proprietor and submitted the eSearch printouts of EUTM No 10 325 934. The applicant supported his application with a statement of grounds arguing that due to the similarity of the signs, based on their coinciding verbal element, and the identity of goods there is a likelihood of confusion and that EUTM No 12 123 717 should be declared invalid pursuant to Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

On 20/10/2015 the EUTM proprietor responded to the applicant with an application for a declaration of invalidity pursuant to Article 59(1)(b) EUTMR claiming that the applicant was acting in bad faith when filing the application for the trade mark No 10 325 934.

On 21/12/2015 the Office suspended the invalidity proceedings following a request from the EUTM proprietor on 10/12/2015 until a final decision had been taken in the proceedings mentioned in the previous paragraph against the earlier mark.

On 04/07/2017 the EUTM proprietor requested a resumption of proceedings by the Office and a rejection or withdrawal of these proceedings since the earlier right, on which the application was based, was invalidated in its entirety with a final decision on 16/02/2017 in case No 11 957.

The Office resumed the invalidity proceedings on 19/04/2018 and invited the applicant to decide on whether or not it maintained the application of invalidity. The applicant did not reply to the Office’s letter.

CEASING OF EXISTENCE OF THE EARLIER RIGHT

According to Article 60(1)(a) EUTMR:

An EU trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings:

1. where there is an earlier trade mark as referred to in Article 8(2) and the conditions set out in paragraph 1 or 5 of that Article are fulfilled.

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

1. 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;

2. applications for a trade mark referred to in Article 8(2)(a) EUTMR, subject to their registration;

3. trade marks which are well known in a Member State.

Therefore, the legal basis of the application requires the existence and validity of an earlier right within the meaning of Article 8(2) EUTMR.

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 cancellation may only be upheld 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 and the earlier right that has ceased to have effect cannot coexist anymore, the cancellation 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).

The applicant submitted an application for cancellation of invalidity on the basis of European Union trade mark No 10 325 934, ‘KLARUS’. This trade mark was cancelled by decision No 11 957 of 16/02/2017, which is now final.

As is apparent from the facts stated above, the earlier mark ceased to exist and thus cannot constitute a valid trade mark on which the cancellation action can be based within the meaning of Article 60(1)(a) EUTMR and Article 8(2) EUTMR.

Since the only earlier trade mark, on which the application for invalidity is based, was invalidated in its entirety with a final decision of 16/02/2017 in case No 11 957, the request to the Office for a decision on the application for declaration of invalidity is unfounded.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Plamen IVANOV

Birgit Holst FILTENBORG

Irina SOTIROVA

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.