OPPOSITION Nо B 3 087 087

 

Distrosur, S.A., Pol. Tec. de Ogijares, Nave 39, 18151 Ogijares (Granada), Spain (opponent) 

 

a g a i n s t

 

Selux Diagnostics Inc., 56 Roland Street, Suite 206, 02129 Charlestown, United States of America (applicant), represented by Arnold & Siedsma, Rembrandt Tower, 28th Floor, Amstelplein 1, 1096 HA Amsterdam, Netherlands (professional representative).

On 16/11/2020, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 087 087 is rejected in its entirety.

 

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

 

REASONS

 

The opponent filed an opposition against all the goods in Classes 1, 5, 9 and 10 of European Union trade mark application No 18 025 514  (figurative mark). The opposition is based on Spanish trade mark registration No 2 872 935 (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

 

PROOF OF USE

 

In accordance with 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 filing or, where applicable, the date of priority 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 rejected.

 

On 19/12/2019, the applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely on Spanish trade mark registration No 2 872 935 for the figurative mark .

The request was filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The initial time limit to file the evidence of use was extended first as a consequence of the DECISION No EX-20-3 of the Executive Director of the Office of 16 March 2020 concerning the extension of time limits and the subsequent DECISION No EX-20-4 of 29 April 2020.

On 18/03/2020, the applicant filed a request for restriction of the list of the goods of its trade mark application. Due to the situation caused by COVID-19 (the Office was unable to communicate with the parties via official mail which is opponents’ only communication mode with the Office) this limitation was forwarded to the opponent on 15/06/2020 giving him a new time limit (25/08/2020) to decide whether he wished to maintain the opposition in the present case. Consequently, the time limit to file the evidence of use has been also extended to this date and finally expired on 25/08/2020.

For the sake of completeness, the Opposition Division notes that it finds the applicants comments filed on 16/06/2020 about giving the opponent another time limit, unfounded because the delay on handling the restriction and giving the opponent a new time limit was caused by force majeure.

The opponent did not submit any evidence concerning the use of the earlier trade mark on which the opposition is based. It did not argue that there were proper reasons for non-use either.

 

According to Article 10(2) EUTMDR, 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) and (3) EUTMR and Article 10(2) EUTMDR.

 

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, 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

Maria José LOPEZ BASSETS

 

 

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.