of the First Board of Appeal
of 19 September 2016
In Case R 977/2016-1
Via Saldarini Catelli, 1
22070 Grandate (Como)
Applicant / Appellant
represented by PERANI & PARTNERS S.p.A., Piazza San Babila, 5, 20122 Milano, Italy
Next Retail Limited
Leicester, Leicestershire LE19 4AT
Opponent / Respondent
represented by MARKS & CLERK LLP, 90 Long Acre, London WC2E 9RA, United Kingdom
APPEAL relating to Opposition Proceedings No B 2 338 757 (European Union trade mark application No 12 328 704)
The First Board of Appeal
composed of Th. M. Margellos as a single Member having regard to Article 135(2) and (5) EUTMR, Article 1(c)(2) BoA-RP and Article 10 of the Decision of the Presidium on the organisation of the Boards of Appeal as currently in force, and to the First Board’s Resolution No 3 of 9 March 2012 on decisions by a single Member
Registrar: H. Dijkema
gives the following
By an application filed on 20 November 2013, ARTSANA
S.p.A. (‘the applicant’) sought to register the figurative
for goods in Class 20.
The application was published on 2 January 2014.
On 2 April 2014, Next Retail Limited (‘the opponent’) filed an opposition against the registration of the published trade mark application for the goods applied for.
The grounds of opposition were those laid down in Article 8(1)(b) and 8(5) EUTMR.
The opposition was based, inter alia, on the following earlier rights:
European Union trade mark registration No 15 594
filed on 1 April 1996 and registered on 19 October 1998 for goods in Classes 3, 11, 14, 18, 20, 24, 25 and 27.
UK trade mark No 2 453 621
filed on 25 April 2007 and registered on 24 October 2008 for goods and services in Classes 3, 4, 9, 11, 14, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29 and 35.
By decision of 4 April 2016 (‘the contested decision’), the Opposition Division upheld the opposition for all the contested goods and rejected the European Union trade mark applied for in its entirety. The applicant was ordered to bear the costs.
On 31 May 2016, the applicant filed an appeal against the contested decision. No statement of grounds was filed.
On 3 August 2016, the applicant withdrew its appeal and confirmed that a decision on costs would not be necessary due to an agreement reached between the parties.
On 5 August 2016, the applicant withdrew its European Union trade mark application.
The Board hereby takes note of the withdrawal of the appeal and of the European Union trade mark application and that as a consequence, the appeal and opposition proceedings are terminated.
With the withdrawal of the EUTM application and, therefore, of the subject-matter of the opposition proceedings, the contested decision cannot take effect.
Pursuant to Article 85(5) EUTMR, the Board further notes the agreement between the parties and that, as a consequence, a decision on costs is not required.
On those grounds,
Th. M. Margellos
19/09/2016, R 977/2016-1, NEXT2ME (fig.) / NEXT et al.