Invalidity appeal · Board of Appeal · 2020-01-20
R2375/2018-3
Contested design: 001809138-0001
Outcome
The appeal is dismissed and the invalidity applicant is ordered to reimburse the costs incurred by the holder in the appeal proceedings.
Show verbatim operative text(it)
1. il ricorso è respinto; 2. la richiedente la nullità è condannata a rifondere le spese sostenute dalla titolare nel procedimento di ricorso.
CostsApplicant ordered to pay costs
Parties
Applicant · invalidity challenger
Flamagas, S.A.via PDF extraction
Spain (ES)
Metalúrgia, 38-42, 08038 Barcelona, Spagna
Represented by
Holder · RCD owner
MatMind S.r.l.via PDF extraction
Italy (IT)
Via degli Olmetti, 46, 00060 Formello (RM), Italia
Represented by
Prior art cited (1)
Flamagas lighter shape ('Clipper') — the earlier distinctive sign relied upon under Article 25(1)(e) CDR; declared invalid by First Board of Appeal decision 30/07/2015, confirmed by General Court 27/06/2017
EU trade mark No 4 758 652 · EUIPO
Legal grounds invoked
Argument summary
- ›The invalidity applicant (Flamagas) had originally grounded the invalidity application on Article 25(1)(e) CDR (use of its EU trade mark No 4 758 652 — the Clipper lighter shape); it later sought to add Article 25(1)(b) CDR (lack of novelty/individual character) after its trade mark was declared invalid, arguing the now-invalidated mark had nonetheless been disclosed under Article 7 CDR.
- ›The design holder (MatMind) argued that the Article 25(1)(b) ground was inadmissible because it had not been invoked in the original application, and that the Article 25(1)(e) ground was unfounded since the trade mark had been declared null and void.
- ›The Board held that the applicant had expressly limited its action at the outset to Article 25(1)(e) CDR; attempting to extend to Article 25(1)(b) after the application was impermissible; and since the underlying trade mark registration had been declared invalid with retroactive effect to its filing date (24 November 2005), the Article 25(1)(e) ground was unfounded.
- ›The appeal was dismissed as unfounded.
Deciding panel
- ChairTh. M. Margellos
- RapporteurC. Rusconi
- MemberC. Negro
- RegistrarM. Chaleva
Decision files
| Language | Type | Source link |
|---|---|---|
| enEnglish (en) | machine translated | Download original from EUIPO ↗ |
| esespañol (es) | machine translated | Download original from EUIPO ↗ |
| frfrançais (fr) | machine translated | Download original from EUIPO ↗ |
| itItalian | original | Download original from EUIPO ↗ |
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