NICOLE LEE NL HOLLYWOOD SINCE 2004 | Decision 2425794 - Wahebo Services B.V. v. Nicole, Inc.

Date Published: Oct 1, 2017

OPPOSITION No B 2 425 794

Wahebo Services B.V., Lelienhuyze 3, 5221, 'S-Hertogenbosch, The Netherlands (opponent), represented by Bogaerts En Groenen Advocaten, Parkweg 12, 5282 SM Boxtel, The Netherlands (professional representative)

a g a i n s t

Nicole Inc., 1133 South Boyle Avenue, Los Angeles, California 90023, United States of America (applicant), represented by Maucher Jenkins, 26 Caxton Street, London  SW1H 0RJ, United Kingdom (professional representative).

On 01/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 425 794 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 of European Union trade mark application No 12 984 126, namely against the goods in Classes 14, 18 and 25. The opposition is based on European Union trade mark application No 12 930 004. The opponent invoked Article 8(1)(b) EUTMR.

Earlier trade mark	Contested sign

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a trade mark which is not yet registered, the opposing party must provide a copy of the relevant filing certificate or an equivalent document emanating from the administration with which the trade mark application was filed (except in the case of a European Union trade mark application) — Rule 19(2)(a)(i) EUTMIR.

In the present case, the only earlier right on which the opposition is based – a European Union trade mark application No 12 930 004, has been rejected in its entirety, in the decision of the Opposition Division of 08/06/2015 in opposition proceedings No B 2 430 588, which was subsequently confirmed by the decision of the First Board of Appeal of 07/07/2016 in Case R 1518/2015-1. The decision of the Opposition Division became final on 05/12/2016.

Following the Office’s notification of 15/02/2017, the opponent did not withdraw its opposition.

Consequently, since the only earlier mark on which the present opposition is based has ceased to exist, the opposition is hereby rejected as unfounded.

COSTS

According to Article 85(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 Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, 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

Gueorgui IVANOV

Monika CISZEWSKA

Ewelina ŚLIWIŃSKA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.