OPPOSITION No B 2 525 825

Farmasino Pharmaceuticals (Jiangsu) Co., Ltd.,  No. 100 Jianye Road Nanjing City, Jiangsu Province, People´s Republic of China (opponent), represented by Dennemeyer & Associates, S.A., Vogelweidstr 8, 60596 Frankfurt am Main, Germany (professional representative)

a g a i n s t

Farmasino Inc., 13089 Peyton Dr. #C197 Chino Hills 91709, United States (of America) (applicant]), represented by Luther Rechtsanwaltsgesellschaft Mbh, Anna-Schneider-Steig 22, 50678 Köln, Germany (professional representative).

On 02/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 525 825 is rejected as inadmissible.

2.        The opposition fee will not be refunded.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 688 635, in Classes 1 and 5. The opposition is based on international trade mark registration No 1 227 124 designating European Union territory. The opponent invoked Article 8(1)(b) EUTMR.

Earlier trade mark	Contested sign

ADMISSIBILITY

According to Article 41(1)(a) EUTMR, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8 by the proprietors of earlier trade marks referred to in Article 8(2) EUTMR.

According to Article 8(2)(a) EUTMR, ‘earlier trade marks’ means trade marks with a date of application for registration which is earlier than the date of application for registration of the Community trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks.

Therefore, an opposition must be based on an earlier mark within the meaning of article 8(2) EUTMR.

In the present case, the applicant filed the European trade mark application No 13 688 635 on 29/01/2015. On 20/05/2015, the opponent filed an opposition against all the goods of said application. The opposition is based on international trade mark registration No 1 227 124 for goods in Classes 1 and 5 filed on 02/09/2014. However, European trade mark application No 13 688 635 was filed with a priority claim based on US registration No 8 636 300 that was filed on 18/08/2014, namely a date prior to the filing date of international trade mark registration No 1 227 124 on which the opposition is based. Therefore, the opposition is not based on an earlier mark within the meaning of Article 8(2) EUTMR.

For an earlier right to be earlier it must have, in the absence of any priority, an application date that is prior to the day on which the contested EUTM application was filed. Oppositions are sometimes based on one or more marks or other rights that are not earlier than the EUTM application. Establishing whether a right is earlier takes place at the admissibility stage. When the only earlier mark is or all earlier marks are not earlier, the Office will inform the opponent of the inadmissibility and invite it to file observations on the matter before a decision on inadmissibility is taken.

On 30/06/2015, the opposition based on earlier international trade mark registration No 1 227 124 was found admissible. Subsequently, on 23/12/2015, the Opposition Division informed the parties of its intention to revoke its previous decision on admissibility. The reason was that the proceedings that led to this decision contained an obvious procedural error attributable to the Office, namely that it had overlooked the priority claim based on US registration No 8 636 300. On 31/08/2016, the Office hereby revokes its decision of 30/06/2015 in accordance with the reasons stated in its communication. Finally, on 21/11/2016 the Opposition Division informed the parties that the opposition will be rejected as unfounded because the mark on which the opposition is based is not an earlier right within the meaning of Article 8 (2) EUTMR.

The opposition must, therefore, be rejected as inadmissible.

Please note that the opposition fee will not be refunded. In accordance with Rule 18(5) EUTMIR, the Office only refunds the opposition fee in view of a withdrawal and/or restriction of the trade mark during the cooling-off period.

The Opposition Division

Pedro JURADO MONTEJANO

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.