On 20/06/2016 the applicant, represented by the team of IP Consulting, filed an application for a declaration of invalidity.
The application is against European Union trade mark filed on 10/09/2014 and registered on 02/03/2015. It is based on European Union trade mark, filed on 15/01/2014 and registered on 22/05/2014. The document aims invalidation for all the goods in Classes 5, 29, 30 and 32.
The applicant invoked Article 60(1)(a) EUTMR in conjunction with Articles 8(1)(a) and (b) EUTMR.
The request is also based on a work protected under the Bulgarian Law on Copyright pursuant to Article 60(2)(c) EUTMR, namely:
An EU trade mark may be declared invalid due to application to the Office. The other option is a counterclaim in infringement proceedings. Within the proceedings such trade mark may be prohibited pursuant to another earlier right under the Union legislation or national law governing its protection, and in particular:
(a) a right to a name;
(b) a right of personal portrayal;
(c) a copyright;
(d) an industrial property right.
The certificate of registration of the prior EUTM proves that the rights of the sign are held by the applicant. Furthermore, the sign of the contested EUTM is identical to the device, which is protected under the Bulgarian Law on Copyright.
Eventually, the applicant, represented by IP Consulting, successfully proved that the contested EUTM infringes the earlier registered copyright.
Consequently, on the grounds of Article 60 (2)(c) EUTMR, the Cancellation Division found that the application should be declared invalid. The decision includes all the goods applied for. The losing proprietor must bear the costs.
Pursuant to the Article 60(2)(c) EUTMR, an European Union trade mark would be declared invalid if the use of such EUTM infringes earlier copyright under the EU legislation or a national law.