OSTEOART | Decision 2653775 - Merck KGaA v. FARMAC-ZABBAN S.P.A. Farmaceutici Medicazione Articoli Chirurgi

Date Published: Sep 28, 2017

OPPOSITION No B 2 653 775

Merck KGaA, Frankfurter Str. 250, 64293 Darmstadt, Germany (opponent), represented by Best Rechtsanwälte PartmbB, Hostatostr. 26, 65929 Frankfurt am Main, Germany (professional representative)

a g a i n s t

Farmac-Zabban S.P.A. Farmaceutici Medicazione Articoli Chirurgi, Via Persicetana, 26, 40012 Calderara di Reno (BO), Italy (applicant), represented by Bugnion S.P.A., Via di Corticella, 87, 40128 Bologna, Italy (professional representative).

On 10/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 653 775 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 European Union trade mark application No 14 767 412, namely against some of the goods and services in Classes 5 and 35. The opposition is based on United Kingdom trade mark registration No 1 589 245, covering goods in Class 5. The opponent invoked Article 8(1)(b) EUTMR.

OSTEOGUARD	OSTEOART
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 the present case, the evidence filed by the opponent on 10/02/2016 along with the notice of opposition consists of an extract from the ‘TMView’ data base, dated 29/01/2016.

According to the evidence, the owner of the United Kingdom trade mark registration No 1 589 245 is ‘Merck Consumer Healthcare Limited’, based in the United Kingdom. However, the notice of opposition was filed in the name of the German company ‘Merck KGaA’.

The evidence mentioned above is insufficient to substantiate the opponent’s earlier trade mark, because the opponent and the owner of the United Kingdom trade mark invoked as the basis of the opposition are different legal entities.

According to Article 41(1)(a) EUTMR, notices of opposition to the registration of a European Union trade mark may be given by the proprietors of earlier marks referred to in Article 8(2) EUTMR, as well as licensees authorised by the proprietors of those trade marks, in respect of Articles 8(1) and 8(5) EUTMR. Therefore, the opponent must be either the proprietor of the earlier mark, or a licensee duly authorised by the trade mark proprietor to file the opposition.

On 22/02/2016, the opponent was given two months, commencing after the ending of the cooling-off period, to complete the opposition by furnishing facts, evidence and arguments and to substantiate the earlier right on which the opposition is based. Originally, this time limit was set to expire on 27/06/2016. However, after an extension of the cooling-off period, the abovementioned time limit expired on 17/09/2016.

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

Thus, apart from the abovementioned extract from ‘TMView’, the opponent did not provide any evidence of a transfer of proprietorship of the earlier United Kingdom trade mark to its name, nor did it file any documents to demonstrate that it had been authorised by the trade mark owner to file an opposition in its capacity as licensee.

It follows that the opponent failed to demonstrate its entitlement to file the opposition based on earlier United Kingdom trade mark registration No 1 589 245.

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

Michele M. BENEDETTI ALOISI

Solveiga BIEZA

Julie GOUTARD

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.