OPPOSITION No B 2 779 802

Tecnimede-Sociedade Técnico-Medicinal, S.A., Rua da Tapada Grande, nº 2, 2710-089 Abrunheira, Sintra, Portugal (opponent), represented by C/M/S Rui Pena, Arnaut & Associados, Rua Sousa Martins, 10, 1050-218 Lisboa, Portugal (professional representative)

a g a i n s t

Bifodan A/S, Bogbinderivej 6, 3390 Hundested, Denmark (holder), represented by Zacco Denmark A/S, Arne Jacobsens Allé 15, 2300 Copenhagen, Denmark (professional representative).

On 14/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 779 802 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 10 716 235, namely against all the goods in Class 5. The opposition is based on Portuguese trade mark registration No 208 137. The opponent invoked Article 8(1)(b) EUTMR.

LISOLAC	BIFOLAC
Earlier trade mark	Contested sign

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority 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 will be rejected.

For international registrations designating the European Union, the ‘date of filing’ or, where applicable, the ‘date of priority’ 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 the date of registration, the date of subsequent designation of the European Union or the date of priority of the contested international registration, as applicable. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

In the present case, the relevant date for the contested international registration (that is, the date of subsequent designation of the EU) is 04/12/2015.

The holder requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely Portuguese trade mark registration No 208 137.

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

On 18/05/2017, the opponent was given until 23/07/2017 to file the requested proof of use.

The opponent did not furnish any evidence concerning the use of the earlier trade mark on which the opposition is based. It did not argue that there were proper reasons for non-use either.

According to Rule 22(2) EUTMIR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition.

Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR.

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 holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Benoit VLEMINCQ

Martina GALLE

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.

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.