OPPOSITION Nо B 2 958 737

 

The Dermaceuticals Co. Ltd., 186 Westbourne Park Road, W11 1BT London, United Kingdom (opponent)

 

a g a i n s t

 

S.A. Alkaitis, 3146 Industrial Blvd., 95691 West Sacramento, United States of America (applicant), represented by Arlette Molenaar, Reyer Anslostraat 4 HS, 1054 KV Amsterdam, Netherlands (professional representative).

On 06/07/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 2 958 737 is rejected as inadmissible.

 

2.	The opponent bears the costs, fixed at EUR 300.

 

REASONS

 

On 18/09/2017, the opponent filed an opposition against all the goods and services of European Union trade mark application No 16 782 708 ‘DR. ALKAITIS’ (word mark), namely against all the goods and services in Classes 3, 35, and 44. The opposition is based on European Union trade mark registration No 6 455 109 ‘Dr. Alkaitis’. The opponent invoked Article 8(1)(a) and (b) EUTMR.

 

  

ADMISSIBILITY

 

According to Article 92(2) EUTMR (in the version in force at the time of filing of the opposition, now Article 119(2) EUTMR), natural or legal persons not having either their domicile or their principal place of business or a real and effective industrial or commercial establishment in the EEA must be represented before the Office in accordance with Article 93(1) EUTMR (in the version in force at the time of filing of the opposition, now Article 120(1) EUTMR) in all proceedings established by the EUTMR, other than the filing of an application for a European Union trade mark.

 

In the present case, the opposition was filed on 18/09/2017 by Mr. Herman Stein. During the present opposition proceedings, the earlier right has been returned to its previous owner The Dermaceuticals Co. Ltd. with the judgment of the District Court of The Hague of 10/07/2019.

On 01/02/2020, the United Kingdom (UK) withdrew from the EU subject to a transition period until 31/12/2020. It follows that the opponent The Dermaceuticals Co. Ltd. does not have its domicile or principal place of business or a real and effective industrial or commercial establishment in the EEA and has not appointed a representative.

 

The Office informed the opponent of the deficiency in its notification dated 11/01/2021. The opponent was set a time limit of two months, until 16/03/2021, to appoint a representative. The opponent did not reply within the prescribed time limit.

 

The opposition must therefore be rejected as inadmissible.

For the sake of completeness, the Opposition Division notes that the only earlier right in the current opposition proceedings, namely European Union trade mark registration No 6 455 109 ‘Dr. Alkaitis’ which was filed on 25/01/2008, and registered on 12/12/2008 has been cancelled with decision No 42 368 C of 14/10/2020 which is now final. As it is apparent from the facts stated above, the earlier mark ceased to exist and thus cannot constitute a valid trade mark on which the opposition can be based within the meaning of Article 46(1)(a) EUTMR and Article 8(2) EUTMR.

 

COSTS

A decision on costs is taken in opposition proceedings that have passed the cooling-off period, that is to say, where the adversarial part of the proceedings has started (Article 6(4) EUTMDR, former Rule 18(4) EUTMIR, in force before 01/10/2017). 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

Trinidad NAVARRO CONTRERAS

 

 

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.