OPPOSITION No B 2 753 898

Therabel Pharma NV, Paardeweide 3G, 4824 EH Breda, Netherlands (opponent), represented by Gevers, Brussels Airport Business Park, Holidaystraat, 5, 1831 Diegem, Belgium (professional representative)

a g a i n s t

Laboratorios Heel España, S. A. U., Polígono Industrial La MIna, C/ Madroño s/n, 28770 Colmenar Viejo, Madrid, Spain (applicant), represented by Hispamark Patentes y Marcas, Calle Sánchez Barcaiztegui, 4 – Ofic. C, 28007 Madrid, Spain (professional representative).

On 23/03/2017, the Opposition Division takes the following

DECISION:

1. The request for continuation of proceedings is rejected.

2. Opposition No B 2 753 898 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 366 735, in Classes 3 and 5. The opposition is based on Benelux trade mark registration No 984 765, registered for goods in Class 5. The opponent invoked Article 8(1)(b) EUTMR.

SLEEPYL	SLEEPEEL
Earlier trade mark	Contested sign

SUBSTANTIATION

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.

According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 shall be in the language of the proceedings or accompanied by a translation. The translation shall be submitted within the time limit specified for submitting the original document.

According to Rule 98(1) EUTMIR, when a translation of a document is to be filed, the translation shall identify the document to which it refers and reproduce the structure and contents of the original document.

On 25/08/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. This time limit expired on 30/12/2017.

Within the deadline, on 14/12/2016, the opponent filed a document in French containing data concerning the trade mark on which the opposition is based with an English translation of the list of goods. However, such document does not meet the requirements set in Rule 98(1) EUTMIR.

In this context the Opposition Division notes that the English document submitted by the opponent does not contain all the relevant data of the print out from the official database, for instance, translations regarding the filing, registration and expiration date and the status of the trade mark. Hence, said document does not reproduce the contents of the evidence to be translated. The Office accepts that no translation of the information headers in the extracts/certificates (such as, ‘filing date’ ‘colour claim’, etc.) is needed, provided that they are also identified using standard INID codes or national codes, which was not the case.

On 04/01/2017, the parties were informed that the earlier right had not been properly substantiated and that the Office will rule on the opposition on the basis of the evidence before it. On 05/01/2017, the opponent answered it considered it had substantiated the earlier right and that in addition, the earlier right had been encoded in the EUIPO Register under ‘miscellaneous’ on 14/12/2016. The Opposition Division can only repeat what previously mentioned about incomplete translation of the French certificate.

CONTINUATION OF PROCEEDINGS

On 07/02/2017, that is, only after the expiry of the abovementioned time limit, the opponent submitted a translation reproducing the structure and contents of the print out from the official database. On the same date the opponent requested for continuation of proceedings. While Article 82(1) EUTMR allows the continuation of proceedings upon request where the requesting party has omitted to observe a time limit vis-à-vis the Office, Article 82(2) EUTMR excludes the applicability of such provision to the time limits laid down in Article 42 EUTMR, i.e. the time limits set by the Office for the parties to submit observations within the opposition procedure. This covers the time limits for the opponent to substantiate its opposition under Rule 19 EUTMIR. Therefore, the request for continuation of proceedings cannot be accepted where the opponent has failed to substantiate its opposition within the time limit set by the Office.

According to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

It follows that the evidence filed by the opponent cannot be taken into account.

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.

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

Ana MUÑIZ RODRÍGUEZ

José A. GARRIDO OTAOLA

Jessica LEWIS

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.