CATZOL | Decision 2660192

OPPOSITION No B 2 660 192
Agros Trading GmbH, Muehlbachstr. 151, 4063 Hoersching, Austria (opponent),
represented by Georg Lehner, Südtirolerstraße 12a, 4600 Wels, Austria
(professional representative)
a g a i n s t
Vetpharma Animal Health, S.L., Calle Les Corts, 23, 08028 Barcelona, Spain
(applicant), represented by Ars Privilegium S.L., Felipe IV, 10, 28014 Madrid, Spain
(professional representative).
On 17/10/2017, the Opposition Division takes the following
1. Opposition No B 2 660 192 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
The opponent filed an opposition against all the goods of European Union trade mark
application No 14 653 299 ‘CATZOL’, namely against the goods in Classes 1, 5 and
31. After a limitation of the list of goods requested by the applicant on 22/02/2016,
the contested goods are those in Classes 5 and 31. The opposition is based on
European Union trade mark registration No 1 475 458 ‘CATSIL’. The opponent
invoked Article 8(1)(a) and (b), and Article 8(5) EUTMR.
Earlier trade mark Contested sign
Decision on Opposition No B 2 660 192 page: 2 of 3
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of
filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so
requests, the opponent must furnish proof that, during the five-year period preceding
the date of publication of the contested trade mark, the earlier trade mark has been
put to genuine use in the territories in which it is protected in connection with the
goods or services for which it is registered and which the opponent cites as
justification for its opposition, or that there are proper reasons for non-use. The
earlier mark is subject to the use obligation if, at that date, it has been registered for
at least five years.
The same provision states that, in the absence of such proof, the opposition will be
The applicant requested that the opponent submit proof of use of the trade mark on
which the opposition is based, namely of the European Union trade mark
No 1 475 458 ‘CATSIL’.
The request was filed in due time and is admissible as the earlier trade mark was
registered more than five years prior to the relevant date mentioned above.
On 22/11/2016 the opponent was given two months to file the requested proof of use.
This time limit was further extended on the request of the opponent until 04/04/2017.
The opponent submitted evidence of use of the earlier trade mark. However, this
evidence was submitted only on 12/04/2017, whereas the time limit for submitting
proof of use expired on 04/04/2017. In this regard, it should be noted that the date of
receipt is the date on which the Office receives the communication irrespective of
when it was placed in the mail or postal system. It follows from the wording of
Rule 22(2) EUTMIR (in the version in force at the time of filing the request for proof of
use) that the time limit laid down is a strict one, which means that the Office cannot
take into account evidence submitted for the first time after the expiry of the time limit
(18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 28). Therefore, it is considered
that the opponent did not submit proof of use or show that there were proper reasons
for non-use within the time limit set by the Office.
According to Rule 22(2) EUTMIR (in the version in force at the time of filing the
request for proof of use), if the opposing party does not provide such proof before the
time limit expires, the Office will reject the opposition.
Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and
Rule 22(2) EUTMIR (in the version in force at the time of filing the request for proof of
Decision on Opposition No B 2 660 192 page: 3 of 3
According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.

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