CREOST | Decision 2656208
Date Published: Oct 1, 2017
OPPOSITION No B 2 656 208
Nobel Biocare Services AG, Balz Zimmermannstr. 7, 8302 Kloten, Switzerland (opponent), represented by Roschier Brands, Attorneys Ltd., Keskuskatu 7 A, 00100 Helsinki, Finland (professional representative)
a g a i n s t
Novadip Biosciences, Chemin du Cyclotron 6, 1348 Ottignies-Louvain-la-Neuve, Belgium (applicant), represented by Distinctive IP Benelux SARL, 2, Domaine Brameschhof, 8290 Kehlen, Luxembourg (professional representative).
On 11/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 656 208 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 14 752 547, namely against all the goods and services in Classes 5, 10, 42 and 44. Following a limitation by the applicant, the opposition was maintained against all the goods and services in Classes 5, 42 and 44. The opposition is based on international trade mark registration No 1 157 626 designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.
creos | CREOST |
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.
In this regard, it must be noted that an international trade mark registration designating the European Union has the same legal effect as a European Union trade mark registration, but it is not a European Union trade mark registration. The Office is not competent to administer international registrations and is not the administration by which international registrations are registered, which is the World Intellectual Property Organization (WIPO). Consequently, to substantiate an opposition based on such a trade mark, the opponent must provide the Office with the relevant document(s), as required by 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 mark on which the opposition is based.
On 24/03/2016, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 29/07/2016.
The opponent did not submit any evidence concerning the existence, validity and scope of protection of the 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 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
Sam GYLLING | Milda CERNIAUSKAITE | Oana-Alina STURZA |
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.