OPPOSITION No B 2 643 818

Brand Scout GmbH, Am Joseph 15, 61273 Wehrheim, Germany (opponent), represented by Zdarsky Wirtschaftsrecht, August-Schanz-Str. 8 Eing. B, 60433, Frankfurt am Main, Germany (professional representative)

a g a i n s t

Cinfa Biotech, S.L., Avda. Roncesvalles, 1, 31699 Olloki (Navarra), Spain (applicant), represented by AB Asesores, Calle Bravo Murillo, 219 – 1º B, 28020 Madrid, Spain (professional representative).

On 28/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 643 818 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 of European Union trade mark application No 14 733 422 applied for in Classes 3, 5 and 42. The opposition is based on German trade mark registration No 544 131. The opponent invoked Article 8(1)(b) EUTMR.

BIOPHARMA
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 its examination to the facts, evidence and arguments provided by the parties and the relief sought.

According to Article 41(1) EUTMIR, notice of opposition to the registration of an EU trade mark application may be given, in respect of Article 8(1) EUTMR, by the proprietors of earlier trade marks referred to in Article 8(2) EUTMR as well as licensees authorised by the proprietors of those trade marks.

In the present case, the opposition was filed by Brand Scout GmbH on 22/01/2016.

 

On 10/02/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the required evidence to substantiate the opposition and respective translations. This time limit expired on 15/06/2016.

On 26/04/2016, the opponent provided an extract from a data base of the ‘Deutsches Patent- und Markenamt’, dated 26/04/2016, with partial translation attached, where the owner of the earlier mark on which the opposition is based is referred to as ‘Brand Scout GmbH’.

On 31/08/2016, together with its submissions on a proof of use request, the representative of the opponent informed the Office that Brand Scout GmbH had been succeeded by WindStar Medical GmbH. However, the opponent did not provide any documents to prove the succession or the change of ownership.

On 02/05/2017, the opponent was given one month to submit a new certificate or transfer documents (change of ownership) of the earlier right, since the extract from the database mentioned above has the name of the previous owner (Brand Scout GmbH) and not the alleged successor/new owner/new opponent (WindStar Medical GmbH). This time limit expired on 07/06/2017.

On 04/05/2017, the opponent provided an extract from a register named ‘Handelsregister B des Amtsgerichts Bad Homburg v.d. Höhe’ including a letter explaining that Brand Scout GmbH was merged with WindStar Medical AG and later WindStar Medical AG has changed its name into WindStar Medical GmbH. However, the opponent did not submit the necessary translations of the submitted extract from the register into the language of the proceedings, English.

On 22/06/2017, the opponent was given one month to provide the Office with a translation of the document provided on 04/05/2017 into the language of the proceedings. This time limit expired on 27/07/2017.

On 30/06/2017, the opponent provided a partial translation of this document.  

However, in the provided documents, there is no documented link between the initial opponent which appears in the trade mark certificate (Brand Scout GmbH) and the alleged successor in title (WindStar Medical GmbH). The transfer could therefore not be traced, as the translated extract only refers to some legal alterations concerning WindStar Medical GmbH, but there is no mention of Brand Scout or any (legal/economical) connection between both entities.

Given that the opposing party has notified to the Office a change in the ownership of the earlier mark but has failed to provide evidence to prove the entitlement of the new owner, the opposition should 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

Irina SOTIROVA

Lena FRANKENBERG GLANTZ

José Antonio GARRIDO OTAOLA

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.