OPPOSITION No B 2 772 468

US Pharmacia International, Inc., 966 Hungerford Dr Ste 3B, Rockville Maryland 20850, United States of America (opponent), represented by Kondrat & Partners, Al. Niepodległości 223/1, 02-087 Warszawa, Poland (professional representative)

a g a i n s t

Robert Mazurkiewicz, Kolbuszowa Górna 44A, 36-100 Kolbuszowa, Poland (applicant), represented by Katarzyna Sas, Kościuszki 58c, 36-020 Tyczyn, Poland (professional representative).

On 27/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 772 468 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 15 564 008, , namely against all the goods and services in Classes 30 and 35. The opposition is based on the following earlier rights:

• Polish trade mark registration No 219 533 for the figurative mark  for goods in Class 5;

• Polish trade mark registration No 236 779 for the word mark ‘Vigor Complete’ for goods in Class 5;

• Polish trade mark registration No 223 306 for the word mark ‘VIGOR GOLD’ for goods in Class 5;

• Polish trade mark registration No 228 970 for the figurative mark  for goods and services in Classes 5, 35 and 39;

• Polish trade mark registration No 256 430 for the figurative mark  for goods in Class 5;

• Polish trade mark registration No 237 651 for the word mark ‘VIGOR – daj coś więcej na święta’ for goods and services in Classes 5, 35 and 39;

• Polish trade mark registration No 256 428 for the figurative mark  for goods in Class 5;

• Polish trade mark registration No 236 777 for the word mark ‘Vigor Plus … bo lubię żyć bardziej!’ for goods in Class 5.

The opponent invoked Article 8(1)(b) EUTMR.

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.

According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document.

According to Rule 98(1) EUTMIR, when a translation of a document is to be filed, the translation must identify the document to which it refers and reproduce the structure and contents of the original document.

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 06/12/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. This time limit expired on 11/04/2017.

On 30/03/2017, the opponent submitted evidence including printouts from the Polish Patent Office (UPRP Register Plus) for seven of the earlier rights and a translation into the language of proceedings of the goods and services protected by these seven earlier rights.

• With respect to Polish trade mark registration No 236 777

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

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 his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded as far as it is based on this earlier right.

• With respect to Polish trade mark registrations No 219 533, No 236 779, No 223 306, No 228 970, No 256 430, No 237 651 and No 256 428

The opponent’s evidence includes seven printouts from the Polish Patent Office, one for each of the seven remaining earlier rights. However, whilst the headings of the data are in English, the actual data is not, as can be seen below in this copy of one of the submitted printouts:

These printouts do not contain all the necessary information in the language of proceedings; for example, they do not provide a translation of the type of mark, the status, colours, etc.

According to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

It follows that the evidence filed by the opponent cannot be taken into account.

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 for these remaining earlier rights.

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

Lucinda CARNEY

Ric WASLEY

Vita VORONECKAITĖ

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.