OPPOSITION No B 2 460 882
Tedec Meiji Farma, S.A., Carretera M-300, Km. 30,500, 28802 Alcala de Henares – Madrid, Spain (opponent), represented by Ryo Rodriguez Oca, S.L., Calle Juan Hurtado de Mendoza, 9 Apto. 507, 28036 Madrid, Spain (professional representative)
a g a i n s t
Alexion Pharmaceuticals, Inc., 100 College Street, New Haven, Connecticut 06510, United States of America (applicant), represented by Thomas Tresper, Rilkeweg 20, 64285 Darmstadt, Germany (professional representative).
On 30/06/2017, the Opposition Division takes the following
1. Opposition No B 2 460 882 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 264 163, namely against all the goods in Class 5. The opposition is based on Spanish trade mark registration No 2 912 608. The opponent invoked Article 8(1)(b) EUTMR.
Earlier trade mark
CEASING OF EXISTENCE OF EARLIER SPANISH TRADE MARK REGISTRATION
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.
According to Article 41(1)(a) EUTMR, the proprietor of earlier trade marks referred to in Article 8(2) may file an opposition to the registration of a European Union trade mark application on the grounds that it may not be registered under Article 8.
Further, according to Article 8(2) EUTMR, ‘earlier trade marks’ means:
- trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the European Union trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:
- EU trade marks;
- trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property;
Therefore, the legal basis of opposition requires the existence and validity of an earlier right within the meaning of Article 8(2) EUTMR.
On 16/09/2014, the applicant filed European Union trade mark application No 13 264 163.
On 05/01/2015, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 264 163, namely against all the goods in Class 5. The opposition is based exclusively on Spanish trade mark registration No 2 912 608 for goods in Class 5.
On 30/07/2015, the Office informed the opponent that it had suspended the opposition proceedings at the applicant’s request, because the earlier Spanish trade mark was under cancellation proceedings.
On 11/01/2017, the applicant informed the Office that the earlier Spanish trade mark had been declared invalid by decision No 229/2016 of 02/12/2016 of the ‘Juzgado de lo Mercantil No 1’ of Madrid, Spain. A copy of the decision and its English translation were enclosed.
On 15/02/2017, the opponent was notified that the opposition proceedings were being resumed and it was given two months to inform the Office whether or not it maintained the opposition. It was also mentioned that if it does not withdraw its opposition by the time limit given, the Office would issue a decision rejecting the opposition as unfounded. This time limit expired on 27/04/2017.
As is apparent from the facts above, the earlier Spanish trade mark was revoked by the abovementioned decision issued by the ‘Juzgado de lo Mercantil No 1’ of Madrid, Spain. Therefore, the earlier mark has ceased to exist and it follows from the foregoing that this earlier mark claimed as the basis of the opposition is no longer a valid trade mark within the meaning of Article 8(2) EUTMR and, consequently, cannot constitute a valid basis for the opposition in the present case.
Therefore, the opposition must be rejected as unfounded.
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
Chantal VAN RIEL
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.