OPPOSITION No B 902 744

Janssen Pharmaceutica N.V., Turnhoutseweg 30, 2340 Beerse, Belgium (opponent), represented by Gevers, Brussels Airport Business Park, Holidaystraat, 5, 1831 Diegem, Belgium (professional representative)

a g a i n s t

Wright Medical Technology, Inc., 1023 Cherry Road, Memphis, Tennessee 38117, United States of America (applicant) represented by Cabinet Lavoix, 62, rue de Bonnel, 69448 Lyon Cédex 03, France (professional representative).

On 31/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 902 744 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 4 095 501, namely all goods in Class 10. The opposition is based on Benelux trade mark registration No 754 545 for the word mark ‘LPS’ and International trade mark registration No 841 712 designating Germany, Spain, France, Italy, Austria, Portugal, Hungary, Poland, Czech Republic and Slovenia, also for the word mark ‘LPS’. The opponent invoked Article 8(1)(a) and (b) EUTMR.

LPS	LPS
Earlier trade marks	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 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 particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide 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 present case the notice of opposition was not accompanied by any evidence as regards the earlier trade marks on which the opposition is based.

On 16/11/2005 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit was to expire on 17/03/2006.

On 09/01/2006 the parties requested a three month extension of the cooling-off period which was accepted by the Office on 16/01/2006 and the deadline for substantiation was extended until 17/06/2006.

On 12/05/2006 the Office informed the parties about a change of office practice regarding the cooling-off period which were then automatically granted for a maximum of 24 months with the possibility for either party to opt out. The cooling off was extended at the request of the parties until 17/11/2007 and the substantiation deadline was extended accordingly to 17/01/2008.

On 22/11/2007 the Office accepted a suspension on the request of both parties and informed of the change in the substantiation deadline to 17/07/2008.

On 23/05/2008 the Office informed the parties about a change of office practice regarding renewal requests for suspension based on ongoing negotiations which were then automatically granted for 12 months with the possibility for either party to opt out. The suspension requested by the parties would therefore end on 19/05/2009 and the deadline for substantiation would be on 19/07/2009.

Further suspensions were requested and granted, the last request on 12/05/2016. On 30/05/2016 the Office informed the parties of a change of practice that obliges the parties after three years of suspensions to provide an explanation as to why negotiations have still not come to an end. The new deadline for the opponent to provide facts, evidence and arguments was set on 19/07/2017.

The opponent did not submit any evidence concerning the substantiation of the earlier trade marks.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR 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 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

Konstantinos MITROU

Lynn BURTCHAELL

Denitza STOYANOVA-VALCHANOVA

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.