OPPOSITION No B 2 921 891

Merck Sante (société par actions simplifiée), 37, rue Saint Romain, 69008 Lyon, France (opponent), represented by Best Rechtsanwälte PartmbB, Hostatostr. 26, 65929 Frankfurt am Main; Germany (professional representative)

a g a i n s t

Coswell S.p.A., Via P. Gobetti 4, 40050 Funo di Argelato, Italy (applicant), represented by Porta Checcacci & Associati S.P.A., Via Trebbia 20, 20135 Milano, Italy (professional representative).

On 10/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 921 891 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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 should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 403 412 for the word mark ‘FLEBODERM’, namely against all the goods in Class 5. The opposition is based on French trade mark registration No 97709359 for the word mark ‘PHLEBOCREME’. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION

According to Article 95(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 submitted 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 Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit 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 Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence 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 that is not a European Union trade mark, the opposing party must submit 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 Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR.

In the present case, the evidence submitted by the opponent consists of a registration certificate in French language.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark, because there is no translation to the language of proceedings, namely English, of the certificate filed for the French registration. Moreover, no renewal certificate has been filed to prove that the earlier right is still in force.

The earlier French trade mark was filed on 12/12/1997 and expired accordingly on 12/12/2007, which is before the expiration of the substantiation period, namely on 26/02/2018 (please, see below).

Apart from providing physical evidence of substantiation, in cases where evidence concerning the filing or registration of the earlier rights or the evidence concerning the contents of the relevant national law is accessible online from a source recognised by the Office, the opponent may instead formally declare to the Office that it relies on online evidence, and that this online evidence may take the place of any physical evidence.

According to Article 7(3) EUTMDR, where the evidence concerning the filing or registration of the earlier rights referred to in paragraph 2(a) or, where applicable, paragraph 2(d) or (e), or the evidence concerning the contents of the relevant national law, is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source.

It is noted that even if the opponent formally declares that online evidence may be relied on, it is its obligation to check that the online sources reflect the most accurate and up to date relevant information. Moreover, where the opponent after such a declaration still submits physical evidence without formally revoking its previous declaration, in the event there is a contradiction between the online evidence and the physical evidence, the most recent up-to-date evidence will apply.

A declaration may be introduced by the opposing party at any time before the expiry of the time limit of substantiation. In the absence of any formal declaration (including when such declaration has been withdrawn), the opposition should be rejected as non-substantiated if no physical evidence is presented in due time.

The opponent did not make any reference to the online evidence.

According to Article 8(1) and (7) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, 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.

According to Article 7(4) EUTMDR, any filing, registration or renewal certificates or equivalent documents referred to in Article 7(2)(a), (d) or (e) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party on its own motion within the time limit specified for submitting the original document.

Such translations must be submitted by the opponent on its own motion and within the time limit for substantiation of the opposition. Only what is submitted and translated within this time limit is taken into account.

The requirement of translating the evidence of substantiation also relates to online evidence referred to by the opponent, where the language of the online evidence is not the same as the language of the proceedings. This follows from Article 7(4) EUTMDR, which states that ‘evidence accessible online’ shall also either be in the language of the proceedings, or shall be accompanied by a translation.

According to Article 25(1) EUTMIR, when a translation of a document is to be filed, the translation must identify the document to which it refers and reproduce the structure and contents of the original document. Furthermore, according to the same provision, where a party has indicated that only parts of the document are relevant, the translation may be limited to those parts.

The opponent attached a partial translation referring only to the goods for which the earlier trade mark has been registered.

In the present case, the evidence filed by the opponent is not sufficient to substantiate the opponent’s earlier mark and is not in the language of the proceedings.

On 17/07/2017 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. Due to the extension of cooling-off period and opting out of the cooling-off period, by one of the parties, this time limit expired on 26/02/2018.

The opponent did not submit the necessary renewal certificate and translations.

According to Article 7(4) EUTMDR, translations submitted after the expiry of the relevant time limits will not be taken into account. Furthermore, according to Article 7(5) EUTMDR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted in or that have not been translated into the language of the proceedings, within the time limit set by the Office.

It follows that the evidence filed by the opponent cannot be taken into account.

According to Article 8(1) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, 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 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

Monika CISZEWSKA

Reet ESCRIBANO

Alina FRUNZA

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.