(Removal from the Register)

Order of the President of the Second Chamber of the Court of First Instance, 6 May 2004

Summary of the Order

Community trade mark – Appeals procedure – Action brought against the rejection of a trade mark application following the lodging of opposition – Withdrawal of the opposition – Admissibility at any time – Discontinuance by the applicant – Removal from the Register

(Rules of Procedure of the Court of First Instance, Art. 99; Council Regulation No 40/94, Art. 43(5))

In opposition proceedings brought against the registration of a Community trade mark, opposition may be withdrawn at any time. Accordingly, if opposition is withdrawn before the refusal of the application for registration under Article 43(5) of Regulation No 40/94 on the Community trade mark has become final, the decision of the Opposition Division and that of the Board of Appeal ruling on the opposition become redundant and cannot be an impediment to the registration of the trade mark.

If, in such circumstances, the applicant informs the Court in writing that he wishes to discontinue the proceedings, the President is to order the case to be removed from the Register under Article 99 of the Rules of Procedure.

(see paras 3-4)

1

By letter received at the Registry of the Court of First Instance on 26 November 2003, the applicant informed the Court that, as Druckhaus Waiblingen Remstal‑Bote GmbH had, by letter of 31 October 2003 addressed to the OHIM, withdrawn its opposition to the registration of the disputed trade mark, the applicant wished to abandon its application under Article 99 of the Rules of Procedure of the Court. It sought no order as to costs.

By letter received at the Registry of the Court of First Instance on 18 December 2003, the defendant submitted to the Court that the case should not be terminated by an order removing the case from the Register, but by an order that there was no need to give a ruling, in order to avoid the contested decision becoming <i>res judicata</i>. The defendant sought no order as to costs in its observations.

As the Court held in its order of 3 July 2003 in Case T-10/01 <i>Lichtwer Pharma </i>v <i>OHIM – Biofarma (Sedonium) </i>[2003] ECR II-0000, paragraph 15, opposition may, as with the application for registration, be withdrawn at any time. Accordingly, if opposition is withdrawn before the refusal of the application under Article 43(5) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) has become final, the decision of the Opposition Division and that of the Board of Appeal ruling on the opposition become redundant and cannot be an impediment to the registration of the trade mark.

Under Article 99 of the Rules of Procedure, if the applicant informs the Court in writing that he wishes to discontinue the proceedings, the President is to order the case to be removed from the Register.

In terms of the third subparagraph of Article 87(5) of the Rules of Procedure, where proceedings are discontinued and costs are not applied for in the written pleadings, the parties are to bear their own costs.

It must therefore be ordered that the case be removed from the Register and in the absence of any claim for costs that the parties are to bear their own costs.

On those grounds,

hereby orders:

1.

Case T-325/03 is hereby removed from the Register of the Court of First Instance.

The parties shall bear their own costs.

Luxembourg, 6 May 2004.

J. Pirrung

Registrar

1Language of the case: German.