Y2K | Decision 2464447 - HPU Hanseatische Projekt Union GmbH v. AlcorDistillery OÜ
Date Published: Sep 28, 2017
OPPOSITION No B 2 464 447
HPU Hanseatische Projekt Union GmbH, Ramskamp 71-75, 25337 Elmshorn, Germany (opponent), represented by Torsten Becker, Alsterkamp 32E, 20149 Hamburg, Germany (professional representative)
a g a i n s t
AlcorDistillery OÜ, Viljandi mnt 22b, 11217 Tallinn, Estonia (applicant), represented by Koppel Patendibüroo OÜ, Roseni 10 – 151, 10111 Tallinn, Estonia (professional representative).
On 25/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 464 447 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 13 208 021, namely against all the goods in Classes 32 and 33. The opposition is based on part of the goods of European Union trade mark registration No 814 327, namely the goods in Classes 32 and 33. The opponent invoked Article 8(1)(a) and (b) EUTMR.
Y2K | |
Earlier trade mark | Contested sign |
PARTIAL CEASING OF EXISTENCE OF EARLIER EUROPEAN UNION TRADE MARK REGISTRATION No 814 327
According to Article 41(1)(a) EUTMR, the proprietor of earlier trade marks referred to in Article 8(2) EUTMR may file an opposition to the registration of a European Union trade mark application pursuant to Article 8(1) EUTMR.
Further, according to Article 8(2) EUTMR, ‘earlier trade marks’ means:
- trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the EU trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:
- EU trade marks;
- trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property;
- trade marks registered under international arrangements which have effect in a Member State;
- trade marks registered under international arrangements which have effect in the Union.
- applications for the trade marks referred to in subparagraph (a), subject to their registration;
- trade marks which, on the date of application for registration of the EU trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the EU trade mark, are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention.
Therefore, the legal basis of opposition requires the existence and validity of an earlier right within the meaning of Article 8(2) EUTMR.
On 26/01/2015, the opponent filed a notice of opposition claiming as the basis of the opposition part of the goods of European Union trade mark registration No 814 327, namely the goods in Classes 32 and 33.
By decision rendered in Cancellation proceedings No 10397 C of 18/11/2015, the Cancellation Division declared EUTM No 814 327 partially invalid by revoking the trade mark for all the goods in Class 32 and all the goods except vodka in Class 33. However, by decision of 07/07/2016 (R 0116/2016-1), the First Board of Appeal partially annulled the cancellation decision and revoked the trade mark also for the remaining goods in Class 33, namely vodka.
Consequently, as the decisions of the Cancellation Division and the Boards of Appeal have become final and binding, the earlier European Union trade mark registration No 814 327 has ceased to exist for Classes 32 and 33.
It follows from the foregoing that this earlier mark claimed as the basis of the opposition, is no longer a valid trade mark for the goods claimed as the basis of the opposition within the meaning of Article 8(2) EUTMR and, consequently, cannot constitute a valid basis for the opposition. Therefore, the opposition must be 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
Chantal VAN RIEL | Ric WASLEY | Vita VORONECKAITĖ |
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.