NOCOSPRAY | Decision 1948036

Date Published: Sep 28, 2017

OPPOSITION No B 1 948 036

Laura Tarragoni, Via Montecassino, 10, 21049 Tradate (Varese), Italy (opponent), represented by Marietti, Gislon e Trupiano S.R.L., Via Larga, 16, 20122 Milano, Italy (professional representative)

a g a i n s t

OXY'PHARM, 917 rue Marcel Paul, 94500 Champigny-Sur-Marne, France (holder).

On 15/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 1 948 036 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 068 319, namely against all the goods in Class 11. The opposition is based on Italian trade mark registration No 1 518 099. The opponent invoked Article 8(1)(b) EUTMR.

	NOCOSPRAY
Earlier trade mark	Contested sign

As a preliminary remark it should be noted that the opposition was based on an European Union trade mark application 9 208 836 for which on 18/11/2011 the opponent requested a conversion. Consequently, on 20/01/2015 the Office suspended the opposition proceedings until a final decision was taken by the Italian trade mark office (UIBM) granting the conversion request. On 25/05/2016, the opponent submitted an extract in the Italian language form the Italian trade mark (UIBM) data base.

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.

On 21/06/2012, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. Originally, this time limit was given until 02/11/2012. However, as a result of the suspension of the proceedings, on 22/07/2016 the Office informed the opponent that the new time limit for submitting further facts, evidence and arguments for completing the opposition was due to expire on 27/11/2016.

On 25/05/2016, the opponent submitted an extract from the Italian trade mark database, containing some particulars of the trade mark registration No 1 518 099. However, the evidence filed by the opponent is not in the language of the proceedings, and the opponent did not submit the necessary translation.

According to Rule 19(4) EUTMIR, the Office will 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.

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. In the present case the holder did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Carlos MATEO PÉREZ

Arkadiusz GORNY

Solveiga BIEZA

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.