THE BOARDS OF APPEAL
DECISION of the First Board of Appeal of 9 December 2016
In Case R 2003/2016-1
Modevertrieb Sarnacchiaro Luxemburger Straße 118 50354 Hurth Germany Applicant / Appellant represented by CHAMBERS OF WALDOWSKI STUENKEL ARENDT & PARTNER, Koenigsallee 31, 40212 Duesseldorf, Germany
v
The Polo/Lauren Company L.P. 650 Madison Avenue New York, New York 10022 United States of America Opponent / Respondent represented by MISHCON DE REYA LLP, Africa House, 70 Kingsway, London, London WC2B 6AH, Spain
APPEAL relating to Opposition Proceedings No B 2 508 722 (European Union trade mark application No 13 545 157)
THE FIRST BOARD OF APPEAL
composed of M. Bra as a single Member having regard to Article 135(2) and (5) EUTMR, Article 1(c)(2) BoA-RP and Article 10 of the Decision of the Presidium on the organisation of the Boards of Appeal as currently in force, and Resolution No 3 of the First Board Resolution of 9 March 2012 on decisions by a single Member
Registrar: H. Dijkema
gives the following
Language of the case: English
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for the goods in Classes 18, 24 and 25.
2 The application was published on 15 January 2015.
3 On 14 April 2015, The Polo/Lauren Company L.P. (‘the opponent’) filed an opposition against the registration of the published trade mark application for as amended goods.
4 The grounds of opposition were those laid down in Article 8(1)(b), Article 8(5)
and Article 8(4) EUTMR.
5 The opposition was based on, inter alia, the European Union trade mark
registration No 4 049 201,
, filed on 29 September 2004 and registered on 03 November 2005 for the goods in Classes 9, 18, 20, 21, 24 and 25.
6 By decision of 12 September 2016 (‘the contested decision’), the Opposition Division upheld the opposition for the contested goods, and awarded the costs to the opponent.
7 On 3 November 2016, the applicant filed an appeal against the contested decision, stating that the appeal fee in the amount of EUR 720 had been paid on the same day, and that the statement of grounds would be sent in due time.
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Decision
Summary of the facts
1 By an application filed on 8 December 2014, Modevertrieb Sarnacchiaro (‘the
applicant’) sought to register the figurative as amended
3
8 However, the applicant failed to pay the appeal fee within the legal time-limit,
i.e. at the latest on or before 14 November 2016.
9 On 21 November 2016, the Registry of the Boards of Appeal informed the applicant that the appeal fee had not been received at the end of the legal period which expired on 14 November 2016 (sic) and that the appeal might, accordingly, be deemed not to have been filed. The applicant was invited to file comments and to provide the Boards with any supporting evidence regarding these findings within one month of receipt of that notification.
10 On 21 November 2016 the applicant’s representative replied that he had ordered its accounting department to initiate the payment of the appeal fee on 3 November 2016, but that the accounting department failed to comply with this order. The payment was effected on 21 November 2016, when they became aware of this error.
11 On 21 November 2016 the Office received the payment of the appeal fee of EUR
720.
12 On 29 November 2016, the applicant sent an affidavit signed by its representative’s secretary responsible for the law-firm’s bookkeeping and payment of invoices, where she stated that she had understood the order, that she planned to initiate the payment online but unfortunately she had ‘failed to attempt the payment’ (sic).
Reasons
13 Pursuant to Article 60 EUTMR, if the appeal fee is not paid within two months from the date of notification of the decision that has been appealed the appeal is deemed not to have been filed.
14 The contested decision was notified by fax on 12 September 2016. The appeal
fee was, therefore, due at the latest on 14 November 2016.
15 In this case, the appeal fee was received belatedly on 21 November 2016.
16 The applicant does not claim that the conditions for admittance of the late payment of the appeal fee are fulfilled, by means of the payment of an additional fee, as provided in Article 144b (4) EUTMR.
17 The applicant’s representative merely explains that the late payment of the appeal fee would be due to a secretarial error, but did not file an application for Restitutio in integrum pursuant to Article 81 EUTMR, nor did it pay the corresponding fee for re-establishment of rights.
18 With a view to the above, pursuant to Rule 49(3) CTMIR, the appeal must be
deemed not to have been filed.
19 Consequently, the contested decision has become final.
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Costs
20 Pursuant to Article 60 EUTMR, since the appeal is deemed not to have been filed the appeal fee shall be refunded to the applicant pursuant to Rule 49(3) CTMIR.
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Order
On those grounds,
THE BOARD
hereby:
1. Declares that the appeal is deemed not to have been filed;
2. Orders that the appeal fee be refunded to the applicant.
Signed
M. Bra
Registrar:
Signed
H.Dijkema
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