DECISION

of the Second Board of Appeal

of 26 November 2019

In case R 1834/2019-2

FREE
8, rue de la Ville l'Evêque 75008 Paris France	Opponent / Appellant

represented by Yves Coursin, 49, Rue Galilée, 75116 Paris, France

v

Social and Beyond, S.L.
Avda. Josep Tarradellas 38, 6º 1ª 08029 Barcelona Spain	Applicant / Defendant

represented by BARROSO HERNÁNDEZ, Calvet 5, 3º, 08021 Barcelona, Spain

APPEAL relating to Opposition Proceedings No B 2 924 002 (European Union trade mark application No 16 478 505)

The Second Board of Appeal

composed of C. Negro as a single Member having regard to Article 165(2) and (5) EUTMR, Article 36 EUTMDR and Article 7 of the Decision of the Presidium on the organisation of the Boards of Appeal as currently in force

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 16 March 2017, Social and Beyond, S.L. (‘the applicant’) sought to register the figurative mark

for the following list of services:

Class 35 ‒ Advertising, marketing and business management, in particular consultancy relating to advertising, marketing and business management via the internet, provided via digital networks and online websites.

The applicant claimed the colours: Blue, White and Black.

2. The application was published on 12 May 2017.

3. On 7 July 2017, FREE (‘the opponent’) filed an opposition against the registration of the published trade mark application for all the above services.

4. The grounds of opposition were those laid down in Article 8(1)(b), Article 8(5) and Article 8(4) EUTMR.

5. The opposition was based on inter alia the earlier French trade mark registration No 13 4037 814 for the word mark FREE filed on 28 September 2009 and registered on 13 February 2014 for the services in Classes 35 and 38.

6. By decision of 25 June 2019 (‘the contested decision’), the Opposition Division rejected the opposition in its entirety and the opponent was ordered to bear the costs.

7. On 19 August 2019, the opponent filed an appeal against the contested decision.

8. On 22 October 2019, the opponent informed the Registry of the Boards of Appeal that the appeal filed against the contested decision was withdrawn.

9. On 4 November 2019, the Registry of the Boards of Appeal confirmed receipt of the withdrawal of the appeal and informed the opponent that the case would be forwarded to the Board for the closure of the appeal proceedings. A copy of said communication was forwarded to the applicant.

Reasons

10. The Board hereby takes note of the withdrawal of the appeal and that, as a consequence, the appeal proceedings are terminated and the contested decision becomes final.

Costs

11. Pursuant to Article 109(4) EUTMR, the party who terminates the proceedings, by withdrawing the appeal shall bear the fees and costs incurred by the other party.

12. Since the opponent terminated the appeal proceedings by withdrawing the appeal, it must bear the costs pursuant to Article 109(4) and 109(7) EUTMR. It follows that the opponent must bear the applicant’s representation costs in the opposition proceedings to the amount of EUR 300 as ordered in the contested decision. As to the appeal proceedings, in this particular case, there was no procedural activity on the part of the applicant. The applicant has had, therefore, no possibility of incurring any costs. Pursuant to Article 109(3) EUTMR, for reasons of equity, the Board deems it appropriate not to make a ruling on the appeal costs.

Order

On those grounds,

THE BOARD

hereby:

1. Takes note of the withdrawal of the appeal and declares the appeal proceedings closed;

2. Declares that the opponent has to bear the applicant’s representation costs in the opposition proceedings of EUR 300 as ordered in the contested decision;

3. Declares that each party bears its own costs in the appeal proceedings.

Signed C. Negro

Registrar: Signed p.o. P. Nafz