OPPOSITION No B 2 792 003

Michal und David Cervenka GbR, Baderweg 159, 45136, Essen, Germany (opponent), represented by Pgl Plegge, Gebauer & Löhr - Rechtsanwälte Partgmbb, Widukindstr. 19, 49477, Ibbenbüren, Germany (professional representative)

a g a i n s t

Melon Optics Limited, Unit 10 Robert Leonard Industrial Estate, Stock Road, SS2 5QD Southend On Sea, United Kingdom (applicant), represented by Handsome I.P. Ltd., 27-28 Monmouth Street, BA1 2AP Bath, United Kingdom (professional representative).

On 06/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 792 003 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods, in classes 9 and 25, of European Union trade mark application No 15 686 124 . The opposition is based on classes 9 and 25 of the European Union trade mark registration No 11 832 482 ‘Melon’. The opponent invoked Article 8(1)(a) and (b) EUTMR.

THE EARLIER RIGHT

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:

1. 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 24/10/2016, the opponent filed a notice of opposition claiming as the basis of the opposition all the goods in classes 9 and 25 of the European Union trade mark registration No 11 832 482.

However, this trade mark was partially cancelled with decision of 15/11/2018 of the Cancellation Division, which is now final. The Cancellation Division declared the European Union trade mark registration No 11 832 482 invalid for all the goods in classes 9 and 25.

As it is apparent from the facts stated above, the earlier mark 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 respect of the claimed goods in classes 9 and 25.

The opposition must therefore be rejected as unfounded.

COSTS

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

Loreto URRACA LUQUE

Erkki Münter

Ferenc GAZDA

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.