The patent relates to a nicotine oral delivery product in form a chewing gum.
Brief outline of the case
The OD rejected the opposition under R 77(2) as the for the OD the opponent was not clearly identifiable at the end of the opposition period.
For the OD, it could not be unambiguously determined whether the opponent was “Swedish Match North Europe AB”, or “Swedish Match AB” which was a separate company.
The opponent was identified as “Swedish Match North Europe AB” on EPO Form 2300, and as “Swedish Match” in the statement of grounds of opposition=opposition brief.
The board set aside the decision of the OD as it held that there was no doubt about the identity of the opponent. The case was thus remitted for further prosecution.
The opponent’s point of view
The documents constituting the notice of opposition identified only one existing legal person as opponent, namely “Swedish Match North Europe AB“. There was nothing to suggest, in the documents making up the notice of appeal, that the reference to “Swedish Match” in the opposition brief was anything other than a permissible abbreviation of “Swedish Match North Europe AB” identified in EPO Form 2300, and nothing to suggest that “Swedish Match AB” could have been meant. Accordingly, the opposition as filed was admissible.
The proprietor’s point of view
The naming of “Swedish Match North Europe AB” in EPO Form 2300 was not the only identification of an opponent that fulfilled the requirements of the EPC. The identification of “Swedish Match” in the opposition brief could not be considered as a reasonable abbreviation of “Swedish Match North Europe AB“.
Since this second identification was the only indication of an opponent including the street and house number, a third party reading the documents making up the notice of opposition would have concluded that “Swedish Match” referred to the second company “Swedish Match AB“, despite the lack of “AB”. Furthermore, the appellant’s AR to correct the name of the opponent under R 139 amounted to admitting that “Swedish Match” was a mistake rather than an abbreviation, and thus contradicted the MR.
To support its point of view, he proprietor quoted decisions T 870/92, T 1034/08, T 603/15 and T 2254/14.
The board’s point of view
EPO form 2300 indicates as opponent: Swedish Match North Europe AB. SE-118 85 Stockholm, Sweden
EPO form 2300 thus contains the full designation of an existing company, namely “Swedish Match North Europe AB”, as shown in the certificate of registration D12. The address given in EPO form 2300, which lacks a house number, is identical to the registered address (see D12), and does not infringe R 76(2,a) in combination with R 41(2,c), “including the house number, if any”.
The accompanying opposition brief indicates as opponent: Swedish Match, Sveavägen 44, 118 85 Stockholm, Sweden.
There is no mention of the separate company “Swedish Match AB” in either EPO form 2300 or the accompanying brief. The opposition brief only mentions “Swedish Match“, which is not the full business name of an existing company.
The documents filed as the notice of opposition do not contain any information which could lead a third party to conclude that “Swedish Match” refers to “Swedish Match AB“.
For the board, the use, in the opposition brief, of the global company name “Swedish Match” without precision as to the legal entity meant does not contradict the unambiguous information provided in EPO Form 2300. Together, the documents filed as the notice of opposition clearly designate the legal entity “Swedish Match North Europe AB” as opponent.
The additional address line “Sveavägen 44” in the opposition brief only completes the information in EPO Form 2300 and could be regarded as the visiting address for “Swedish Match North Europe AB”.
In any case, it does not contradict the identification of the opponent in EPO Form 2300 which does not indicate any street or number.
The board held that the case law cited by the proprietor in the present case, were not applicable as the documents filed as the notice of opposition did not contain any irreconcilable contradiction and do not justify that “Swedish Match” be seen as a tradename which must be associated with “Swedish Match AB”.
The board considered that the opponent may file an AR for correction of “Swedish Match” for the case where the Board would have found this indication to contradict EPO Form 2300. This does not preclude the opponent to defend the view that there is no such contradiction in the first place, and thus does not contradict the corresponding MR.
For all those reasons the opposition was deemed admissible.
Comments
It is always tempting for a proprietor to have the opposition and a subsequent appeal of the opponent to be deemed not admissible, as it precludes any decision on the substance.
In T 603/15, both “Arkema” and “Arkema France” were indicated in the notice of opposition, whereas the official designation of Arkema was actually Arkema S.A. A correction of the name of the opponent under R 139 in EPO Form 2300 should not have been accepted by the OD as the correction was not submitted swiftly according to the conditions set out in G 1/12. .
In T 2254/14, the opponent was designated in Form 2300 by the tradename “Danone Research – Centre for Specialised Nutrition” whereas in the statement of grounds of opposition the name was “Nutricia Research B.V.” The true opponent “Danone Research B.V.” was however sufficiently identifiable.
The key message from the decision and the case law is the following: what matters is the name mentioned in Form 2300. In order to ensure the opponents’ identifiability, it is sufficient, if it is possible for third parties to unmistakably identify it on the basis of the opponents’ information in said form. A correction of the name of the opponent in the opposition brief to align it with the name in Form 2300 is acceptable.
A different story is to request under R 139 the correction of the opponent’s name in Form 2300, or in the absence of Form 2300 in the opposition brief. Even if it could be accepted, the timeliness under G 1/12 has to be respected, cf. T 603/15.
Using a different name in the opposition brief than in Form 2300 should be avoided. Even if there is a contradiction between the names on both documents, this does not lead necessarily in a hindrance in identifying the real opponent, cf. T 2254/14.
https://www.epo.org/en/boards-of-appeal/decisions/t210130eu1
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