OPPOSITION No B 2 629 965

Pharma Action GmbH, Kurfürstendamm 133, 10711 Berlin, Germany (opponent), represented by Cohausz & Florack Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB, Bleichstr. 14, 40211 Düsseldorf, Germany (professional representative)

a g a i n s t

UAB "Actiofarma", Kerupės g. 17, Dievogalos k., 53422 Zapyškių sen., Kauno r., Lithuania (applicant), represented by Advokatų Profesinė Bendrija "Viliušis IR Astromskis", K. Donelaičio g. 24-1, 44239 Kaunas, Lithuania (professional representative)

On 19/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 629 965 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 and services in Classes 5 and 44, respectively, of European Union trade mark application No 14 421 631. The opposition is based on German trade mark registration No 30 732 752, in relation to some goods in Class 5.

The opponent invoked Article 8(1)(b) EUTMR.

PHARMA ACTION
Earlier trade mark	Contested sign

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is 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 will 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 must 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 (emphasis added)

In the present case the evidence filed by the opponent consisted of a registration certificate. However, the earlier right was granted protection until 31/05/2017, according to said certificate, and therefore lapsed during the course of these proceedings.

By letter of 05/01/2016, the opponent was notified about the admissibility of the opposition. On that same letter, it was invited to complete the opposition, and the following text was included in it:

In particular, you are required to substantiate all the earlier rights on which the opposition is based, that is, to prove the existence, ownership and validity of the rights by submitting evidence and, within the same time limit, all appropriate translations and colour representations.

On that same letter, the following was explained:

If the term of protection of the earlier mark has expired at the time the evidence is due, the opponent must also submit a renewal certificate or equivalent evidence, and if this has not yet been issued, evidence that a request for renewal has been duly filed with the competent authorities. If the mark lapses subsequently, the opponent must provide the above evidence at its earliest convenience, or, at the latest, within a period fixed by the Office to that effect.

By letter of 10/07/2017, the Office expressly requested the opponent to submit a renewal certificate of the earlier right, showing that the term of protection had been extended, and to do so by 15/08/2017. However, the opponent did not submit any documents before that date.

Accordingly, the evidence mentioned above is not sufficient to prove the existence of the opponent’s earlier trade mark, because there is no renewal certificate.

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

Carlos MATEO PÉREZ

María del Carmen SUCH SANCHEZ

Vít Mahelka

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.