RHINOCELL | Decision 2836628

Date Published: Sep 25, 2017

OPPOSITION No B 2 836 628

Paradigm Biopharmaceuticals Ltd., Level 2, 517 Flinders Lane, Melbourne VIC 3000, Australia (opponent), represented by Michał Ziółkowski, K&L Gates Jamka sp.k., Plac Małachowskiego 2, 00-066 Warszawa, Poland (professional representative)

a g a i n s t

The Catholic University Industry-Academic Cooperation Foundation, 222, Banpo-daero, Seocho-gu, Seoul 06591, Republic of Korea (applicant), represented by Gevers & Ores, 41 avenue de Friedland, 75008 Paris, France (professional representative).

On 31/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 836 628 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 15 894 512 for the figurative mark , filed for goods and services in Classes 5, 35 and 44. The opposition is based on international trade mark registration No 1 300 555 designating the European Union for the word mark ‘RHINOSUL’. 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.

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 (26/11/2014, T-240/13, Alifoods, EU:T:2014:994, § 28).

Consequently, to substantiate an opposition based on an international trade mark registration designating the European Union, the opponent must provide the Office with a copy of the relevant registration certificate (or equivalent documents issued by the administration with which the mark is registered) or an extract from the accepted official databases. As regards international registrations (as explained in the Guidelines for Examination in the Office, Part C – Opposition, Section 1 – Procedural Matters, available on the Office’s website: https://euipo.europa.eu), the following databases are accepted:

• ROMARIN (the ‘short’ version of the extract being sufficient as long as it contains all the necessary information, but the extended or long version of the WIPO extract being preferable as it contains all the individual indications for each designated country, including the Statement of Grant of Protection)

• TMview (as far as it contains all the relevant data).

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 31/01/2017 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 05/06/2017.

On 01/06/2017 the opponent filed evidence consisting of a printout from eSearch. This evidence is not sufficient to substantiate the opponent’s earlier trade mark, because it is not of one of the accepted databases, as explained above.

The opponent submitted an extract from ROMARIN on 16/06/2017, that is, only after the expiry of the abovementioned time limit for substantiation of the opposition.

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.

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

Lars HELBERT

Denitza STOYANOVA-VALCHANOVA

Claudia MARTINI

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.