DECISION

of the Fifth Board of Appeal

of 9 November 2015

In Case R 252/2015-5

Novartis AG
CH-4002 Basel Switzerland	Applicant / Appellant

represented by FRIEDRICH GRAF VON WESTPHALEN & PARTNER, Kaiser-Joseph-Straße 284, DE-79098 Freiburg i. Br., Germany

v

CRINOS SPA
Via Pavia, 6 IT-20136 Milan Italy	Opponent / Respondent

represented by BIANCHETTI BRACCO MINOJA S.R.L., Via Plinio, 63, IT‑20129 Milano, Italy

APPEAL relating to Opposition Proceedings No B 1 922 536 (Community trade mark application No 10 102 119)

The Fifth Board of Appeal

composed of G. Humphreys as a single Member having regard to Article 135(2) and (5) CTMR, Article 1(c)(2) BoA-RP and Article 10 of the Decision of the Presidium on the organisation of the Boards of Appeal as currently in force, and to the Fifth Board’s Resolution No 1 of 2 February 2015 on decisions by a single Member

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 06 July 2011, Novartis AG (‘the applicant’) sought to register the word mark:

Airflusul

for the following list of goods and services:

Class 5 – Pharmaceutical preparations, namely bronchodilators and anti-asthma preparations.

2. The application was published in the Community Trade Marks Bulletin No 2011/149 of 09 August 2011. On the 9 November 2011 CRINOS SPA (‘the opponent’) filed a notice of opposition against all the goods of the above application (‘the contested mark’) based on Article 8(1)(b) CTMR and the earlier Italian national right for the word mark ‘AERFLU’. This was registered on 24 February 2011 for:

Class 5 – Medicinal Specialties.

3. By decision of 18 December 2014, the Opposition Division upheld the opposition, rejected the application in its entirety and ordered the applicant to bear the costs.

4. On 28 January 2015 the applicant filed a notice of appeal. The appeal was subsequently withdrawn by the applicant on 5 June 2015, following an agreement between the parties.

Reasons

5. As a result of the withdrawal of the opposition the appeal and the opposition proceedings have lost their purpose and shall be closed. The rejection of the Community trade mark application shall now become final.

Costs

6. Article 85(3) CTMR provides that a party who withdraws the Community trade mark application shall bear the fees and costs incurred by the other party. Article 85(5) CTMR stipulates that where the parties have reached an agreement on costs, the Board shall take note of such agreement. According to the applicant, the withdrawal of the application results from an agreement reached between the parties, a copy of which was enclosed in correspondence. The latter does not refer to costs of these proceedings, though the applicant suggested that costs be shared. The opponent, on the other hand, in a communication to the Office received on 17 June 2015 asks for a decision on this issue to be taken.

7. It follows from Article 85(3) CTMR, and the Board thereby decides, that the applicant shall bear the fees and costs of the opposition and the appeal proceedings.

Fixing of Costs

8. Pursuant to Article 85(6) CTMR in conjunction with Rule 94(3) CTMIR, the decision of the Board of Appeal shall, where applicable, include the fixing of the amount of the costs to be paid by the losing party. Pursuant to Rule 94(7)(d)(i) and (v) CTMIR, the amount of the representation costs for the opposition and the appeal proceedings to be paid by the applicant to the opponent shall be fixed at EUR 300 and EUR 550, respectively. In addition, the applicant must bear the opposition fee of EUR 350 in accordance with Rule 94(6) CTMIR. The total amount is EUR 1,200.

Order

On these grounds,

THE BOARD

hereby

1. Takes note of the withdrawal of the Community trade mark application;

2. Closes the opposition and the appeal proceedings;

3. Orders the applicant to bear the fees and costs of the opposition and the appeal proceedings;

4. Fixes the amount of fees and costs to be paid by the applicant to the opponent for the opposition and the appeal proceedings at EUR 1,200.

Signed G. Humphreys

Registrar: Signed H.Dijkema