THE BOARDS OF APPEAL
DECISION of the Fourth Board of Appeal of 9 December 2016
In Case R 2493/2015-4
TEXDECOR SAS 2, rue d’Hem 59780 Willems France Cancellation Applicant / Appellant represented by Sandrine Minne, 629, avenue de République, 5ème étage, 59000 Lille, France
v Aldi GmbH & Co. KG Burgstr. 37 45476 Mülheim/Ruhr Germany EUTM Proprietor / Respondent represented by SCHMIDT, VON DER OSTEN & HUBER, Rechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany
APPEAL relating to Cancellation Proceedings No 10 004 C (European Union trade mark registration No 8 659 484)
THE FOURTH BOARD OF APPEAL
composed of D. Schennen (Chairperson), S. Martin (Rapporteur) and C. Bartos (Member)
Registrar: H. Dijkema
gives the following
Language of the case: English
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Decision
Summary of the facts
1 On 15 May 2011 the respondent obtained the registration of the figurative
declared the invalidity of
for goods in Classes 4, 11, 14, 18, 20, 21, 24, 26, 27, 28 and 34.
2 On 31 October 2014 the appellant applied for the cancellation of the mark. The application for a declaration of invalidity was based on the grounds of Article 53(1)(a) EUTMR, in conjunction with Article 8(1)(a) and (b) EUTMR and earlier French word mark No 97 695 024
CASADECO
registered on 5 June 2008 for goods in Classes 24 and 27.
3 By decision of 28 October 2015, the Cancellation Division rejected the application for a declaration of invalidity because evidence for the genuine use of the earlier French mark in the relevant period, as requested by the respondent, was not submitted.
Submissions and arguments of the parties
4 On 15 December 2015 the appellant filed an appeal requesting that the decision of the Cancellation Division be annulled. The appellant does not contest the Cancellation Division’s findings of lack of evidence but submits new documents as proof of use with the statement of grounds.
5 In reply, the respondent endorses the Cancellation Division’s analysis and requests that the appeal be dismissed. In particular, the respondent observes that the submission of the new documents is outside the time-limit set by the Office and should be rejected as belated.
Reasons
6 The appeal is admissible but not well founded as the cancellation applicant failed to provide, within the time-limit, the evidence requested to prove use of the earlier mark on which the application for a declaration of invalidity is based.
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7 The Cancellation Division correctly noted that according to Article 57(2) and (3) EUTMR, if the EUTM proprietor so requests, the applicant must submit proof that, during the five-year period 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 its 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.
8 According to the same provision, in the absence of such proof, the application
for a declaration of invalidity will be rejected.
9 The respondent requested the appellant to submit proof of use of the trade mark on which the application for a declaration of invalidity was based, i.e. French trade mark No 97 695 024. The request was filed in due time and was admissible, given that the earlier trade mark had been registered for more than five years prior to the date of the application for a declaration of invalidity.
10 The application for a declaration of invalidity was filed on 31 October 2014. The earlier French mark ‘CASADECO’ was registered on 9 April 1997. The contested application was published on 18 January 2010. The applicant was, therefore, required to prove that the earlier mark on which the application was based was genuinely used in France from 18 January 2005 to 17 January 2010, as well as from 31 October 2009 to 30 October 2014.
11 The Cancellation Division found that the appellant did not provide evidence concerning the first period (18 January 2005 to 17 January 2010). All the documents submitted by the appellant referred to the second period, post-dating the first period by several months. The Cancellation Division’s finding was not contested by the appellant. Neither did the appellant give an explanation as to why the evidence required could not have been presented on time.
12 The Board concurs with the Cancellation Division that, after a revision of the evidence submitted during the cancellation proceedings, genuine use of the earlier mark in France from 18 January 2005 to 17 January 2010 was not proven.
13 According to Article 76(2) EUTMR, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties after the expiry of the relevant time-limit remains possible under the wide discretion enjoyed by the Office (judgments of 13/03/2007, C-29/05 P, Arcol, EU:C:2007:162 § 42; and of 12/12/2007, T-86/05, Corpo livre, EU:T:2007:379, § 44, 47). This means that the submission of facts and evidence remains possible after the expiry of a time-limit if there is no statutory provision to the contrary (i.e. ‘unless otherwise specified’) and if that condition is met that the Office has the discretion to take into account facts and evidence submitted out of time.
14 Rule 20(1) CTMIR stipulates the mandatory legal consequence that the opposition must be dismissed. Pursuant to Rule 50(1) CTMIR, this provision applies mutatis mutandis before the Boards and the filing of an appeal does not
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reopen another time-limit. The third paragraph of this Rule states that the Board shall limit its examination of the appeal to facts and evidence presented within the time-limits set in or specified by the Opposition Division in accordance with the EUTMR and the CTMIR, unless the Board considers that additional or supplementary facts and evidence should be taken into account pursuant to Article 76(2) EUTMR.
15 In the present case, the discretion of the Office to consider the late-filed documents as additional or supplementary must be exercised against the appellant. As reasoned above, no single piece of evidence was submitted in respect to the first period within the time-limit to submit proof of use. In such a situation where there is an absolute lack of evidence, the Board considers the documents submitted after the relevant deadline as not being additional or supplementary in the meaning of Article 76(2) EUTMR and therefore disregards these documents.
16 The appellant failed to prove use of the earlier mark on which the application for a declaration of invalidity was based. Thus, the application for a declaration of invalidity must be rejected as unfounded.
17 The appeal shall be dismissed.
Costs
18 The cancellation applicant (appellant) is the losing party and shall be ordered to bear the costs of the cancellation and appeal proceedings, pursuant to Article 85(1) EUTMR. The Cancellation Division correctly decided that the appellant shall bear the costs of the cancellation proceedings.
Fixing of costs
19 Pursuant to Article 85(6) EUTMR in conjunction with Rule 94(3)(iv) and (vi) CTMIR, the decision of the Board of Appeal shall, where applicable, include the fixing of the amount of the costs to be paid by the losing party. These consist of the representation costs of the EUTM proprietor (respondent) for the appeal proceedings at EUR 550 and for the cancellation proceedings at EUR 450. The total amount is EUR 1 000.
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Order
On those grounds,
THE BOARD
hereby: 1. Dismisses the appeal; 2. Orders the appellant to bear the costs incurred by the respondent in the
appeal proceedings; 3. Fixes the total amount of costs to be paid by the appellant to the
respondent in the cancellation and appeal proceedings at EUR 1 000.
Signed
D. Schennen
Signed
S. Martin
Signed
C. Bartos
Registrar:
Signed
H.Dijkema
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