OPPOSITION No B 1 926 552

Laboratory Skin Care, Inc.,  PO Box 7469, Tahoe City, California, United States of America (opponent), represented by Mewburn Ellis LLP, City Tower, 40 Basinghall Street, London  EC2V 5DE, United Kingdom (professional representative)

a g a i n s t

Hydroxatone LLC, 499 Washington Blvd., Jersey City, New Jersey 09310, United States of America (applicant), represented by Forresters, Sherborne House, 119-121 Cannon Street, London  EC4N 5AT, United Kingdom (professional representative).

On 22/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 1 926 552 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 European Union trade mark application No 10 025 146  , namely against all the goods in Classes 3 and 5. The opposition is based on:

• European Union trade mark registration No 2 016 863 ‘HYDROXYSOMES’,
• International trade mark registration No 971 404 ‘HYDROXYSOMES’ designating the EU,
• Non-registered trade mark ‘HYDROXYSOMES’ in the EU and all the individual Member States of EU27.

The opponent invoked Article 8(1)(b), 8(5) and 8(4) EUTMR.

EARLIER EUTM NO 2 016 863 – PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication 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.

The applicant requested that the opponent submit proof of use of, among others, the earlier European Union trade mark registration No 2 016 863.

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

On 22/10/2014, the opponent was given two months 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) EUTMR and Rule 22(2) EUTMIR insofar as it is based on the earlier European Union trade mark registration No 2 016 863.

EARLIER IR NO 971 404 DESIGNATING THE EU

This earlier trade mark was totally cancelled in respect of the European Union, as evidenced by the documents submitted by the applicant on 02/08/2016.

Consequently, the earlier IR No 971 404 designating the EU has lost its standing as an earlier trade mark within the meaning of Article 8(2) EUTMR and the opposition based on this trade mark must, therefore, be rejected.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The Opposition Division considers that the opponent did not clearly and explicitly withdraw the ground of Article 8(4) EUTMR in its observations of 27/08/2014. Consequently, it is necessary to examine this ground of opposition.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

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 will be 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 the present case the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade.

On 14/11/2011 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. Following two extensions and a suspension, this time limit finally expired on 27/08/2014.

The opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based.

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

CONCLUSION

Given that the opposition fails on all counts, the opposition must be rejected in its entirety.

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

Richard BIANCHI

Vít MAHELKA

Lucinda CARNEY

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.