The trademark basic was filed by BASIC Aktiengesellschaft Lebensmittelhandel, a corporation established under the laws of the Federal Republic of Germany (the "Applicant"). The application was published for oppositions on June 8, 2008, and received undefined oppositions.
Opposition Proceedings
There are undefined oppositions were filed:
The first opposition filed on September 8, 2008 by Ambar-Ideias No Papel, S.A. on Likelihood of confusion. the opponent was represented by J. PEREIRA DA CRUZ, S.A. and its proceedings were handled in English
The second opposition filed on September 8, 2008 by DWW Woolworth Deutschland GmbH & Co. KG i. I., vertreten durch den Insolvenzverwalter Ottmar Hermann on (a) Identity of marks and Goods and Services, (b) Likelihood of confusion. the opponent was represented by Ahlborn-Bauer, Silke and its proceedings were handled in German
The third opposition filed on September 7, 2008 by REPSOL, S.A. on Likelihood of confusion. the opponent was represented by PONS IP, S.A. and its proceedings were handled in English
The fourth opposition filed on September 7, 2008 by Maria Clementine Martin Klosterfrau Vertriebsgesellschaft m.b.H. on Likelihood of confusion. the opponent was represented by LOSCHELDER and its proceedings were handled in German
The fifth opposition filed on September 4, 2008 by Perseus Books Group, LLC on Likelihood of confusion. the opponent was represented by NOERR LLP and its proceedings were handled in English
The sixth opposition filed on August 25, 2008 by Gräfe und Unzer Verlag GmbH on (a) Identity of marks and Goods and Services, (b) Likelihood of confusion. the opponent was represented by NESSELHAUF RECHTSANWÄLTE and its proceedings were handled in German
The seventh opposition filed on August 25, 2008 by Gräfe und Unzer Verlag GmbH on (a) Identity of marks and Goods and Services, (b) Likelihood of confusion. the opponent was represented by NESSELHAUF RECHTSANWÄLTE and its proceedings were handled in German
The eighth opposition filed on August 6, 2008 by Engelhorn GmbH & Co. KGaA on Likelihood of confusion. the opponent was represented by PATENT- UND RECHTSANWÄLTE ULLRICH & NAUMANN PARTNERSCHAFTSGESELLSCHAFT MBB and its proceedings were handled in German
The application was filed in German, and German was also language of all opposition proceedings (English was selected as the second language).
Cancellation Proceedings
A total of undefined cancellation proceedings were initiated against the trademark registration in 2015.The first Cancellation was filed by Basic Holdco LLC (represented by Carpmaels & Ransford (Ireland) LLP) on January 7, 2024 and Final decision on costs – Request withdrawn.
The renewal of the trademark was recorded by the office on February 27, 2018.
Change of name and professional address of the trademark registration was recorded on April 19, 2009. Appointment and Replacement of representative of the trademark registration was recorded on August 15, 2010. Appointment and Replacement of representative of the trademark registration was recorded on October 7, 2010. Appointment and Replacement of representative of the trademark registration was recorded on December 1, 2010. Divisions of EUTM registrations of the trademark registration was recorded on September 10, 2013. Relative errors of the trademark registration was recorded on April 19, 2016. Application for revocation or for a declaration of invalidity of the trademark registration was recorded on October 3, 2021. Change of name and address of the trademark registration was recorded on October 13, 2021. Decisions on applications for revocation or for a declaration of invalidity of the trademark registration was recorded on January 11, 2024.
The Appeal with reference B R1440/2010-1 was Opposition partially rejected according to Article 8 CTMR with decision issued on March 30, 2011 by the EUIPO. The Opposition with reference B 001384694 was partially refused EUTMA/IR according to Article 8(1)(b) CTMR with decision issued on May 27, 2010 by the EUIPO. The Opposition with reference B 001387770 was rejected according to Article 8(1)(a) CTMR with decision issued on March 8, 2011 by the EUIPO. The null with reference B C-400/14 was Judgment Confirmed according to Article 8(1)(b) CTMR with decision issued on July 15, 2015 by the EUIPO. The null with reference B T-372/11 was Decision confirmed according to null with decision issued on June 25, 2014 by the EUIPO.
The application claimed as seniority of the Federal Republic of Germany trademark 39832136 registered on November 19, 1998 and filed on June 8, 1998 which was accepted by the office.
Goods And Services
The mark was filed in class 35 with following description of goods:
Franchising, namely providing of commercial and organisational know-how, for a fee, for the marketing of goods and services
Business administration, business consultancy and business management with regard to the planning, arranging and conducting of customer attraction and customer loyalty systems, in particular in the field of mailing, discount, voucher and reward schemes
Issuing information and data carriers, for others (included in class 35), for entering discount, voucher and reward transactions, in particular voucher books, credit cards and cheque cards containing visually readable and/or machine-readable identification data and/or information, in particular magnetic cards and chip cards (smart cards)
Retail and wholesale services in relation to bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, illuminants, candles and wicks for lighting, pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, dietetic substances adapted for medical use, food for babies, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides, medicated bath preparations, food supplements for medical and non-medical purposes, paper, cardboard, photographs, stationery, instructional and teaching material, plastic materials for packaging, leather and imitations of leather, and goods made of these materials, animal skins, hides, trunks and travelling bags, bags, rucksacks, umbrellas, parasols and walking sticks, whips, harness and saddlery, household or kitchen utensils and containers, combs and sponges, brushes, brush-making materials, articles for cleaning purposes, steelwool, unworked or semi-worked glass, glassware, porcelain and earthenware, clothing, footwear, headgear, gymnastic and sporting articles, decorations for Christmas trees, agricultural, horticultural and forestry products and grains, live animals, seeds, natural plants and flowers, foodstuffs for animals, malt, mail order (except transport) or Internet retail services, all in relation to pharmacy goods, cosmetics, perfumery, stationery, textiles.