SYNERGY PHARMACEUTICALS | Decision 2615238
Date Published: Sep 28, 2017
OPPOSITION No B 2 615 238
SC Inner Chi S.R.L., Str. Poligonului f.n., Boldesti Scaieni, jud. Prahova, Romania (opponent), represented by Ruxandra Raluca Ardeleanu, Str. Baia de Arama nr. 1, bloc B, tronson 3, etaj 6, ap. 117, sector 2, 022204 Bucharest, Romania (professional representative)
a g a i n s t
Synergy Pharmaceuticals Inc., 420 Lexington Avenue, Suite 2012, New York New York 10170, United States of America (applicant), represented by Ratza & Ratza S.R.L., Bulevardul A.I. Cuza NR. 52-54, Sector 1, 011056 Bucharest, Romania (professional representative).
On 09/12/2016, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 615 238 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 14 450 654 for the word mark ‘SYNERGY PHARMACEUTICALS’, namely against all the goods in Class 5. The opposition is based on Romanian trade mark registration No 125 638 for the word mark ‘INNERGY’ and Romanian trade mark registration No 120 219 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.
SUBSTANTIATION
According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be 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 shall 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 shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his 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.
On 18/02/2016, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. Following an extension of the cooling-off period, on 02/09/2016 the opponent was given a new time limit of two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 21/11/2016.
The evidence filed by the opponent along with the notice of opposition, which were received by the Office on 26/11/2015, consists of a license agreement in Romanian and English in relation to Romanian trade mark No 120 219. Additionally, along with its observations, which were received by the Office on 20/11/2016, the opponent filed registration certificates of earlier Romanian trade marks No 125 638 and No 120 219, along with their translations into the language of the proceedings, namely English.
The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade marks.
It is assumed that the opponent claims to be the owner of the earlier rights, unless otherwise stated. If the opponent is acting in the capacity of an authorised licensee or a person authorised under national law, it has to make a statement to that effect, and it has to specify the basis on which it is so entitled or authorised.
In the present case, the opponent, namely SC Inner Chi S.R.L., indicated in the notice of opposition that it is the owner, co-owner or licensee of the earlier marks.
According to the evidence submitted, the owner of earlier Romanian trade mark No 125 638 is the company SC Inner Chi Nature S.R.L. Therefore, the opponent (SC Inner Chi S.R.L., as indicated in the notice of opposition) is not the owner of Romanian trade mark No 125 638 on which the opposition is based.
As regards earlier Romanian trade mark No 120 219, according to the evidence submitted, the owner of this earlier mark is Filfan Ramona Catalina. The opponent has submitted a license agreement in relation to this earlier right between the owner of the mark Filfan Ramona Catalina and the company SC Inner Chi Nature S.R.L., as indicated by the first page listing the parties of the agreement and by the company stamp on the last page of the agreement. Therefore, this document does not contain clear indications of the possible entitlement of the opponent, SC Inner Chi S.R.L.
The opponent neither informed the Office that any further modification of the name of the owner had taken place or that the earlier rights had been transferred. If the opposition has been filed with B as the opponent (in the present case, SC Inner Chi S.R.L.) and a copy of the registration certificate or the license agreement shows A as the owner of the earlier mark or as the licensee (in the present case, SC Inner Chi Nature S.R.L.), the opposition can be accepted as admissible on the assumption that the earlier mark was transferred to B before the opposition was filed (or if it is indicated in the notice of opposition that the opponent is acting in its capacity as licensee). However, the entitlement to file the opposition (e.g. evidence of the transfer or of the granting of the licence to the opponent before the opposition was filed) has to be proven within the time limit for substantiation.
In the present case, the opponent did not file evidence (such as the deed of transfer, a copy of the request to register the transfer with the national office or any other documents showing the change of ownership of the registration) that could clearly show that the opponent indicated in the notice of opposition, namely SC Inner Chi S.R.L., is the proprietor of the earlier marks due to a modification of the name of the owner or a transfer of the earlier rights. The opponent also did not manage to demonstrate that it is acting as a licensee or a person authorised by the proprietors of the earlier marks as indicated in the evidence.
Consequently, the abovementioned documents are not sufficient to substantiate the opponent’s earlier Romanian trade mark registrations No 125 638 and No 120 219, since the documents submitted are insufficient to verify the opponent’s ownership of the earlier rights invoked and its entitlement to file the opposition.
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.
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
Begoña URIARTE VALIENTE | Alexandra APOSTOLAKIS | Pedro JURADO MONTEJANO |
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.