CANCELLATION No 12017 C (INVALIDITY)

Bayer Consumer Care AG, Peter Merian-Str. 84, 4052 Basel, Switzerland (applicant), represented by Bojinov & Bojinov Ltd., Fani Bozhinova, 38 Alabin Str., Bulgaria-1000 Sofia, Bulgaria (professional representative)

a g a i n s t

Medice Arzneimittel GmbH, Römerstr. 14, 5400 Hallein, Austria (EUTM proprietor), represented by Isarpatent- Patent-und Rechtsanwälte Behnisch Barth Charles, Postfach 44 01 51, 80750 Munich, Germany (professional representative).

On 29/09/2016, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods and services of European Union trade mark No 11 300 217 ‘MEDITUSSIN’ (word mark), namely against some of the goods in Class 5 and some of the services in Class 44. The application is based on Latvian trade mark registration No 41 783 ‘TUSSIN’ (word mark) and Lithuanian trade mark registration No 33 929 ‘TUSSIN’ (word mark). The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the contested goods are identical or similar to those of the earlier marks and the contested services are similar to the earlier goods, moreover the applicant argues that there is a likelihood of confusion between the signs in comparison.

The EUTM proprietor requested that the applicant submit proof of use of its earlier trade marks.

The applicant has not submitted any evidence to prove use of the earlier marks.

PROOF OF USE

According to Article 57(2) and (3) EUTMR, if the EUTM proprietor so requests, the applicant must submit proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier trade mark has been genuinely used in the territories in which it is protected and for the goods or services for which it is registered and which it cites as justification for its application, or that there are proper reasons for non-use. If, at the date on which the contested EUTM application was published, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions contained in Article 42(2) EUTMR were satisfied at that date.

According to the same provision, in the absence of such proof the application for a declaration of invalidity will be rejected.

The EUTM proprietor requested the applicant to submit proof of use of the Latvian and Lithuanian trade marks on which the application is based.

The request has been filed in due time and is admissible given that the earlier trade marks were registered more than five years prior to the date of the application for a declaration of invalidity.

On 08/01/2016, the applicant was given three months to submit proof of use, the applicant having until 18/04/2016.

The applicant has not submitted any evidence concerning use of the earlier trade marks on which the application for invalidity is based. It has not argued that there are proper reasons for non-use either.

According to Rule 40(6) EUTMIR, if the applicant does not submit such proof before the time limit expires, the Office will reject the application.

Therefore, the application must be rejected pursuant to Article 57(2) and (3) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(iv) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Richard THEWLIS

Julie GOUTARD

María Belén IBARRA DE DIEGO

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 Cancellation 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.