OPPOSITION No B 2 633 728

Bolton Medical, Inc., 799 International Parkway, Sunrise, Florida 33325, United States of America (opponent), represented by Keltie LLP, No. 1 London Bridge, London SE1 9BA, United Kingdom (professional representative)

a g a i n s t

Summit Medical Limited, Industrial Park, Bourton on the Water, Gloucestershire GL54 2HQ, United Kingdom (applicant), represented by Dehns, St Bride’s House, 10 Salisbury Square, London EC4Y 8JD, United Kingdom (professional representative).

On 23/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 633 728 is upheld for all the contested goods.

2. European Union trade mark application No 14 778 906 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 778 906. The opposition is based on European Union trade mark registration No 13 059 571. The opponent invoked Article 8(1)(a) and (b) EUTMR.

DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

1. The goods

The goods on which the opposition is based are the following:

Class 10: Medical apparatus, instruments and devices.

After the commencement of the adversarial part of the proceedings, the applicant requested limitation to the list of goods, which was accepted by the Office. The opponent maintained the opposition. Therefore, the contested goods are the following:

Class 10: Adjustable loop ligament fixation device.

The contested adjustable loop ligament fixation device is included in the broad category of the opponent’s medical apparatus, instruments and devices. Therefore, they are identical.

The applicant argues that the earlier mark covers a very broad range of goods and that the mark is not used nor is there any intention to use the mark in relation to such a broad range of goods.

According to the Office’s practice, a request for proof of use must be explicit, unambiguous and unconditional. Since the applicant’s statement does not meet these requirements, it has not been treated as request for proof of use. Therefore, the opponent was not under any obligation to submit proof that its earlier trade mark had been put to genuine use.

Moreover, for the sake of completeness, it must be stated that earlier trade mark No 13 059 571 was registered on 18/11/2014. Pursuant to Article 15(1) EUTMR, the opponent is still in the ‘grace period’ of five years during which it is not necessary to demonstrate use of the mark in order to rely upon it in opposition proceedings before the Office. Consequently, the request for proof of use according to Article 42(2) and (3) EUTMR would be inadmissible even if it were explicit, unambiguous and unconditional.

2. The signs

RELAY	RELAY
Earlier trade mark	Contested sign

The signs are identical.

3. Conclusion

The signs were found to be identical and the contested goods, namely adjustable loop ligament fixation device, are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 059 571. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(a) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(b) EUTMR.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Rasa BARAKAUSKIENE

Birute SATAITE-GONZALEZ

Denitza STOYANOVA-VALCHANOVA

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.