OPPOSITION DIVISION
OPPOSITION No B 2 841 396
Dietmed Prod. Dietéticos E Medicinais, Lda., Queimadas – Sernada, 3505-330
Viseu, Portugal (opponent), represented by Gastão Da Cunha Ferreira, Lda., Rua
dos Bacalhoeiros, nº. 4, 1100-070 Lisboa, Portugal (professional representative)
a g a i n s t
Vladimír Řezníček, Žatecká 41/4, 11000 Praha 1, Czech Republic (applicant).
On 08/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 841 396 is rejected in its entirety.
2. The opponent bears the costs.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 16 161 127 for the word mark ‘GYNEX’, namely
against all the goods and services in Classes 5 and 44. The opposition is based on
Portuguese trade mark registration No 367 634 for the word mark ‘GINEX’. The
opponent invoked Articles 8(1)(a) and 8(1)(b) EUTMR.
GINEX
GYNEX
Earlier trade mark Contested sign
SUBSTANTIATION
According to Article 76 (1) EUTMR (in the version in force at the time of
commencement of the adversarial part, now Article 95(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 submitted by the parties and the
relief sought.
Decision on Opposition No B 2 841 396 page: 2 of 3
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 (in the version in force at the time of
commencement of the adversarial part), the Office will give the opposing party the
opportunity to submit 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 (in the version in force at the time of
commencement of the adversarial part), within the period referred to above, the
opposing party must also file evidence 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 that is not
a European Union trade mark, the opposing party must submit 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 (in the version in force at the time of commencement of the
adversarial part).
In the present case, the evidence filed by the opponent consists of a registration
certificate from the Portuguese National Institute of Industrial Property for the word
mark ‘GINEX’ with the registration number No 367 634 and a translation of it into
English. According to the above documents the earlier trade mark was filed on
28/10/2002 and registered on 05/11/2003. The term of protection in the case of
Portuguese national trade marks is counted as from the registration date, therefore
the initial 10 years term of protection expired on 05/11/2013. The opponent did not
file any evidence that earlier trade mark had been renewed.
By a communication sent on 11/04/2017, the opponent was given two months,
commencing after the end of the cooling-off period, to substantiate earlier right. This
time limit expired on 15/08/2017. The opponent did not submit any additional
evidence concerning the substantiation of the earlier trade mark.
The evidence mentioned above is not sufficient to substantiate the opponent’s earlier
trade mark, because the initial term of protection has ended and there is no evidence
of renewal of the mark.
According to Rule 20(1) EUTMIR (in the version in force at the time of
commencement of the adversarial part), if until expiry of the period referred to in
Rule 19(1) EUTMIR (in the version in force at the time of commencement of the
adversarial part), 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 will be rejected as unfounded.
The opposition must therefore be rejected as unfounded.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Decision on Opposition No B 2 841 396 page: 3 of 3
Since the opponent is the losing party, it must bear the costs incurred by the
applicant in the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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. In the present case, the applicant did not appoint a
professional representative within the meaning of Article 120 EUTMR and therefore
did not incur representation costs.
The Opposition Division
Elena NICOLAS GOMEZ Jakub MROZOWSKI Lucinda CARNEY
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.