OPPOSITION No B 2 747 882

WindStar Medical 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

Porton Biopharma Limited, Manor Farm Road, Porton, Salisbury Wiltshire SP4 0JG, United Kingdom (holder), represented by Mathys & Squire LLP, The Shard 32 London Bridge Street, London SE1 9SG, United Kingdom (professional representative).

On 15/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 747 882 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of international registration designating the European Union No 1 281 534, namely against all the goods in Class 5. The opposition is based on German trade mark registration No 544 131. The opponent invoked Article 8(1)(b) EUTMR.

BIOPHARMA	PORTON 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 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.

On 26/10/2016, the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit, after an extension, expired on 29/07/2017.

In the present case, the evidence filed by the opponent and received by the Office on 18/07/2017 consists of an extract from the German trade mark office’s data base and a translation into the language of proceeding.

The opposition was filed in the name of ‘Brand Scout GmbH’ and this is the name that appears on the evidence. However, on 09/08/2016 the opponent filed a request to change their name to ‘WindStar Medical GmbH’. This was duly entered into the register on the same day, 09/08/2016, under recordal No T 11 293 258.

Therefore, as the evidence filed to substantiate the earlier right was filed after the change of name was reflected in the Office’s register and yet only shows the previous name of the opponent, the Office concludes that the opponent did not submit adequate evidence to prove, within the time limit set by the Office, namely on or before 29/07/2017, the opponent’s ownership of the earlier right invoked and, consequently, its entitlement to file the opposition.

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 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

Teodora TSENOVA-PETROVA

Ric WASLEY

Vita VORONECKAITE

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.