OPPOSITION No B 2 751 918

Jörg Czarnowski, Mühlenstraße 7, 24340 Eckernförde, Germany (opponent), represented by Hansen und Heeschen Patentantwälte, Eisenbahnstr. 5, 21680 Stade, Germany (professional representative)

a g a i n s t

S&H Global IP Management and Translations S.L., Valle de Alcudia, 3, 28230 Las Rozas (Madrid), Spain (applicant), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative).

On 20/04/2017, the Opposition Division takes the following

DECISION:

1.        The opponent’s request for restitutio in integrum is rejected.

2.        Opposition No B 2 751 918 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 311 665, namely against all the services in Classes 41 and 45. The opposition is based on German trade mark registration No 302 015 063 434. The opponent invoked Article 8(1)(a) and (b) EUTMR.

SH.IP
Earlier trade mark	Contested sign

RESTITUTIO IN INTEGRUM

According to Article 81(1) EUTMR, any party to proceedings before the Office who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit vis-à-vis the Office will, upon application, have its rights re-established if the non-observance in question has the direct consequence of causing the loss of any right or means of redress.

According to Article 81(2) EUTMR, the application must be filed in writing within two months from the removal of the cause of non-compliance with the time limit. The omitted act must be completed within this period. The application is admissible only within the year immediately following the expiry of the unobserved time limit.

According to Article 81(3) EUTMR, the application must state the grounds on which it is based and must set out the facts on which it relies. It will not be deemed to be filed until the fee for re-establishment of rights has been paid.

a)        On the payment of the fee for the application for restitutio in integrum

In accordance with Article 81(3) EUTMR, the application for restitutio in integrum is deemed to be filed once the fee for re-establishment of rights has been paid.

On 20/01/2017, the opponent’s request for restitutio in integrum was received in writing at the Office. The fee for restitutio in integrum was paid on the same date. The application for restitutio in integrum is therefore deemed to have been filed on 20/01/2017.

b)        The admissibility of the request for restitutio in integrum

Article 81(2) EUTMR requires that a request for restitutio in integrum be submitted within two months from the removal of the cause of non-compliance with the time limit and within the year immediately following the expiry of the unobserved time limit. The omitted act must be completed within this period.

On 23/08/2016, the opponent was given until 28/12/2016 to submit further facts and evidence in support of his opposition, which included documentation to substantiate the earlier right invoked as a basis for the opposition. On 08/12/2016, the opponent submitted his observations; however, these were not accompanied by the necessary evidence for substantiation purposes. On 04/01/2017, the opponent received the Office’s letter informing him that he had failed to substantiate the earlier right claimed as a basis of the opposition; therefore, the Office considers that the party knew about the fact that led to non-observance at the latest on 04/01/2017.

The opponent filed a request for restitutio in integrum on 20/01/2017, that is, less than two months from the removal of the cause of non-compliance with the time limit and within the year following the expiry of the deadline.

Together with his request for restitutio in integrum, the opponent filed further facts and evidence to substantiate the earlier right. Therefore, the omitted act was completed within the two-month deadline.

c)        On the substance of the request for restitutio in integrum

Under the terms of Article 81(1) EUTMR, in order for a request for restitutio in integrum to be granted, the following requirements are to be met:

• the person requesting restitutio in integrum has been unable to observe a time limit vis-à-vis the Office;

• the non-observance of the time limit has the direct consequence, by virtue of the provisions of the Regulation, of causing the loss of any right or means of redress; and

• the time limit has not been observed in spite of all due care required by the circumstances having been taken.

As stated above, the opponent did not submit the necessary evidence for substantiation purposes within the set time limit; therefore, he did not observe the time limit vis-à-vis the Office.

One of the other basic requirements for a request for restitutio in integrum to be granted is that the non-observance of a time limit has caused the loss of a right. In the present proceedings, as a result of non-observance of the substantiation time limit, the Office cannot take into account the earlier right for which no evidence was submitted; therefore, the opponent lost the right to substantiate the only earlier right invoked as a basis of his opposition.

Finally, in order for restitutio in integrum to be granted, the party must have taken all due care required by the circumstances to observe the time limit.

According to the case-law of the Boards of Appeal (30/06/2000, R 235/2000-3, THAI EXPRESS, § 7), the situation justifying restitutio in integrum must be abnormal or exceptional, that is, the act must have been omitted because of unforeseeable circumstances that were beyond the opponent’s control, even though all due care was taken.

As pointed out by the Second Board of Appeal (12/11/2002, R 984/2001-2, THUMB DRIVE, § 13), where the party to the proceedings before the Office chooses to employ a professional representative, the relevant person for assessing the exercise of ‘all due care required’ is the representative.

For a representative, the standard of due care required for the avoidance of loss of time limits will generally be higher than that for a party to the proceedings before the Office, as work has to be organised in such a way that failure to observe a time limit is generally excluded. In particular, the representative has to familiarise its administrative staff and anyone else with whom it works with all the particulars of procedures under the EUTMR and instruct them on the procedural steps to be taken, and has to undertake regular checks. The representative must maintain a system of internal control and monitoring of time limits that generally excludes involuntary non-observance of time limits. Restitutio in integrum can be granted if, in spite of these measures, the representative or administrative staff committed an exceptional error or if unforeseeable events occurred.

In the present case, the opponent is represented by a professional representative. In the request for restitutio in integrum, the opponent explains that an employee had made a mistake and had forgotten to file the necessary translation of a certificate of registration and the register information. This explanation was supported by the affirmed statement of the employee who was responsible for the delivery of the necessary documents. However, errors in the management of files caused by the representative’s employees or by the computerised system itself are foreseeable. Consequently, due care would require a system for monitoring and detecting any such errors (13/05/2009, T-136/08, Aurelia, EU:T:2009:155, § 18).

The opponent does not claim any exceptional circumstances or unforeseeable events that led to the mistake in question. In the absence of any truly exceptional reasons that might justify the error, the Opposition Division considers that the opponent’s representative, who was responsible for submitting the evidence in the present opposition proceedings, did not show all due care in ensuring that all the relevant data was correctly included in the material submitted. Likewise, it has not been proven that there were exceptional circumstances and unforeseeable events that were beyond the representative’s control.

The Opposition Division is of the opinion that a human error in the management of files on the part of the opponent’s professional representative, such as the omission of part of the material to be submitted, cannot be considered exceptional circumstances.

In view of the foregoing, the Opposition Division considers that the opponent’s representative, who was responsible for submitting evidence within the time limit set by the Office, did not show all due care in ensuring the completeness of the file.

Therefore, the request for restitutio in integrum is rejected.

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier trade mark on which the opposition is based.

On 23/08/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 28/12/2016.

The opponent did not submit any evidence concerning the existence, validity and scope of protection of the earlier trade mark.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded.

COSTS

According to Article 85(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, he must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) 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

Sam GYLLING

Milda CERNIAUSKAITE

Denitza STOYANOVA-VALCHANOVA

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 Opposition 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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.