OPPOSITION No B 2 515 172

Sopharma AD, 16, Iliensko shausse str., Sofia, Bulgaria (opponent), represented by Rumiana Hristova Peycheva, Sopharma AD, 16, Iliensko shausse, 1220 Sofia, Bulgaria (employee representative)

a g a i n s t

Caldic Chemie B.V., Westerlaan 1, 3016 CK Rotterdam, The Netherlands (holder), represented by V.O., Carnegieplein 5, 2517 KJ The Hague, The Netherlands (professional representative).

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

DECISION:

1.        Opposition No B 2 515 172 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 211 275, namely against all the goods in Classes 1, 3, 29 and 30. The opposition is based on international trade mark registration No 767 874 designating the European Union for the mark ‘’ and Bulgarian trade mark registration No 44 290 for the mark ‘CARSIL КАРСИЛ’. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION − INTERNATIONAL TRADE MARK REGISTRATION No 767 874 DESIGNATING THE EUROPEAN UNION

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards international trade mark registration No 767 874 on which the opposition is based.

On 10/06/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 22/10/2015.

The opponent did not submit any evidence concerning the substantiation of the earlier trade mark.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark. The examination of the opposition will continue on the basis of Bulgarian trade mark registration No 44 290.

PROOF OF USE – BULGARIAN TRADE MARK REGISTRATION No 44 290

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition shall be rejected.

For international registrations designating the European Union, the ‘date of publication’ of the contested mark within the meaning of Article 42(2) EUTMR, that is to say for the purposes of establishing the five-year period of use obligation for the earlier mark, is considered to be six months after the first republication of the international registration, which corresponds to the beginning of the opposition period (Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at the time of filing of the opposition). The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The holder requested that the opponent submit proof of use of the Bulgarian trade mark registration No 44 290 on which the opposition is based.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The relevant date (first republication of the contested international registration plus six months) is 20/02/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Bulgaria from 20/02/2010 to 19/02/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 1:        Chemicals used in industry; science, agriculture; horticulture and forestry.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 15/01/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 15/03/2016 to submit evidence of use of the earlier trade mark. On 14/03/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

Annex 1:        Copy of two contracts dated 27/09/2010 and 14/01/2014, respectively, signed by the opponent and another company, namely ‘Bulgarian Rose Sevtopolis AD’ for manufacture of active substance Carsil during the period 2010−2015;

Annex 2:        Copy of an authorisation to ‘Bulgarian Rose Sevtopolis AD’ by the Bulgarian Drug Agency to produce active substances;

Annex 3:        Thirty-four purchase invoices dated during the period 2010-2015 of manufactured active substance Milk thistle dry extract (Carsil substance);

Annex 4:        Certificates of quality for the active substance ‘Carsil’;

Annex 5:        Information about the active substances manufactured by ‘Bulgarian Rose Sevtopolis AD’;

Annex 6:        Affidavit signed by the Executive Director of ‘Sopharma AD’.

Therefore, the evidence shows that, during the relevant period, there was a contractual relationship between the opponent, referred to in the two contracts as ‘PRINCIPAL’, and ‘Bulgarian Rose Sevtopolis AD’, referred to as ‘CONTRACTOR’. Within the terms of the contract, the latter manufactures at his risk and against payment, different products, amongst others, coated tablets ‘CARSIL’ and the active substances indicated as ‘Milk Thistle dry extract (Carsil)’. The contract specifies that ‘the packaging materials for the medicinal products and active substances shall be submitted by the Principal or by Contractor’s suppliers approved by the ‘Principal’. The company ‘Bulgarian Rose Sevtopolis AD’ has been authorised by the Bulgarian Drug Agency to produce active substances. The evidence includes thirty-four invoices issued by ‘Bulgarian Rose Sevtopolis AD’ to the opponent in relation to sales of the active substance ‘Milk Thistle dry extract (Carsil substance)’ for which numerous test results and certificates of packaging and quality control are also provided. The evidence also indicates the quantities in kilograms of the active substance ‘Milk Thistle dry extract (Carsil)’ manufactured by ‘Bulgarian Rose Sevtopolis AD’ from 2011 to 2015.

The evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time. The evidence shows that the active substance ‘Milk Thistle dry extract (Carsil substance)’ is manufactured by another party but no information is provided to determinate how and when this substance has been used and/or commercialised by the opponent. It cannot be determined the market where the opponent is active. No information is provided concerning the commercial volume, the territorial scope, the duration, and the frequency of use. It cannot be established if the mark has been used publicly and outwardly in the context of commercial activity with a view to economic advantage for the purpose of ensuring an outlet for the goods that it represents (12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68, § 39; 30/04/2008, T-131/06, Sonia Sonia Rykiel, EU:T:2008:135, § 38).

It remains undetermined how the trade mark is used by the opponent in the course of trade. A clear link between the use of the mark and the relevant goods cannot be established. The evidence does not show that the mark is affixed to any packaging or directly to the goods. A representation of the mark on packaging, catalogues, advertising material or sales invoices relating to the goods might have constituted direct evidence that the mark had been put to genuine use, but no material related to the use as a mark by the opponent has been provided.

According to the affidavit signed by the Executive Director of ‘Sopharma AD’, the opponent is ‘a manufacturer of the active substance ‘‘CARSIL’’ since 1982, for the purposes of placing it into the production of medicinal product ‘‘CARSIL’’ intended for the treatment of chronic inflammatory diseases of the liver […]’.

However, the evidence must show use of the Bulgarian trade mark registration No 44 290 for goods of Class 1 and not for medicinal products intended for the treatment of chronic inflammatory diseases of the liver which are classified in Class 5.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time.

Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR as far as Bulgarian trade mark registration No 44 290 is concerned.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Sandra IBAÑEZ

Benoit VLEMINCQ

Martina GALLE

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.