OPPOSITION No B 2 670 795

Laboratoire Nuxe, 19, rue Péclet, 75015 Paris, France (opponent), represented by IPSILON, Le Centralis, 63, avenue du Général Leclerc, 92340 Bourg-la-Reine, France (professional representative)

a g a i n s t

Institut des Cosmétiques de la Nouvelle Génération ‘LA LUXE’ SARL, 102 avenue des Champs-Élysées, 75008 Paris, France (applicant), represented by Sołtysiński Kawecki & Szlęzak – Kancelaria Radców Prawnych i Adwokatów, ul. Jasna 26, 00-054 Warszawa, Poland (professional representative)

On 09/12/2016, the Opposition Division takes the following

 

DECISION:

1.        Opposition No B 2 670 795 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 588 065. The opposition is based on international trade mark registration No 684 940 designating the European Union. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

Earlier trade mark	Contested sign

SUMMARY OF THE FACTS

By communication of 21/03/2016 the Office informed the parties of the relevant time limits for the proceedings, and the opponent was given two months, commencing after the ending of the cooling-off period, to submit evidence for the substantiation of the earlier right and further material until 26/07/216. Upon the opponent’s request, the above time limit was extended until 26/09/2016.

By communication of 07/10/2016, the Office informed the parties that as the opponent had failed to substantiate the earlier right on which the opposition was based within that time limit, it would rule on the opposition on the basis of the evidence before it, and that no further observations could be submitted.

By letter of 15/11/2016, the opponent requested the continuation of proceedings, as laid down by Article 82 EUTMR, and, failing that, restitutio in integrum, as provided for by Article 81 EUTMR.

The opponent understands from the abovementioned communication that it should have submitted a certificate of registration or extract from a database in relation to the earlier trade mark on which the opposition is based. However, this was not clear to the opponent at the moment of filing the notice of opposition, which, in the opponent’s view, explains the failure. In particular, the opponent claims that there is no possibility of attaching such evidence to the opposition form, and that it was not informed that such evidence must be submitted at a later stage.

Attached to this letter, the opponent submitted an extract from the Romarin database, showing the particulars of the earlier mark.

CONTINUATION OF PROCEEDINGS

Article 82 EUTMR provides for the continuation of proceedings where time limits have been missed, provided that certain formal requirements are met.

However, Article 82(2) EUTMR excludes various time limits laid down in certain articles of the EUTMR and EUTMIR, including those laid down in Article 42 EUTMR, that is to say, the time limits set by the Office for the parties to submit observations within the opposition procedure. This covers, inter alia, the time limits for the opponent to substantiate its opposition under Rule 19 EUTMIR (decision of 07/12/2011, R 2463/2010-1, Pierre Robert / Pierre Robert (fig.)).

Therefore, Article 82 EUTMR is not applicable in the present case, and the opponent’s request for the continuation of proceedings under that provision must be rejected.

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 comply with a time limit vis-à-vis the Office shall, upon application, have its rights re-established if the obstacle to compliance 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 obstacle to compliance with the time limit. The omitted act must be completed within this period. The application shall only be admissible 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 shall 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

The application for restitutio in integrum was received by the Office on 15/11/2016. In its letter, the opponent’s representative authorised the Office to deduct the fee from its current account with the Office. The fee for restitutio in integrum was duly deducted by the Office from the account of the opponent’s representative.

The application for restitutio in integrum is, therefore, deemed to have been filed on 15/11/2016.

b)        The admissibility of the request for restitutio in integrum

Upon its request for an extension of the relevant time limit, the opponent was given until 26/09/2016 to submit further facts and evidence in support of its opposition, which included the evidence to substantiate the earlier right invoked as a basis for the opposition.

In its submission received by the Office within the above time limit, the opponent failed to include the necessary documentation that could have served to substantiate the only earlier right invoked, namely, its international trade mark registration No 684 940 designating the European Union.

Therefore, on 07/10/2016, the Office informed the parties that the opponent had failed to substantiate the earlier right and that it would rule on the opposition on the basis of the evidence before it. Taking into account the opponent’s observations of 15/11/2016, this communication by the Office has to be considered to constitute the removal of the obstacle to comply with the time limit, the obstacle being the opponent’s lack of knowledge of the requirement to substantiate the earlier right.

Moreover, the omitted act, namely the substantiation of the earlier mark, was completed on 15/11/2016, that is, within the two-month period beginning on 07/10/2016. Therefore, as required by Article 81(2) EUTMR, the omitted act was completed within the two-month period.

Finally, the application for restitutio in integrum has been filed within the year immediately following the expiry of the unobserved time limit.

The application is, therefore, admissible.

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

Under the terms of Article 81(1) EUTMR, for an application for restitutio in integrum to be granted, the following requirements must be met:

i)        the person requesting the restitutio in integrum has been unable to comply with a time limit vis-à-vis the Office;

ii)        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;

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

i)        Non-observance of a time limit

The opponent was given until 26/09/2016 to substantiate its earlier right. The opponent, however, did not file any evidence to substantiate its earlier right within that time limit.

It follows from the above that the opponent was not able to observe a time-limit vis-à- vis the Office.

ii)        Loss of right

According to Rule 19(4) EUTMIR, the Office ‘shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.’

It follows that the non-observance of a time limit has caused a loss of a right, namely the exclusion of possible submissions or documents filed after that time limit from the facts and arguments on which the Office bases its decision.

iii)        Due care

Restitutio in integrum implies a duty of diligence for the parties and their representatives when acting before the Office. The applicant for restitutio in integrum must have taken the utmost care to observe the time limit. Where the party to the proceedings before the Office is represented by 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 non-observance of time limits will generally be higher than 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 collaborators and administrative staff with all the particulars of procedures under the European Union Trade Mark Regulation 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.

Therefore, the Office has to ascertain whether or not the opponent took ‘all due care required by the circumstances’ in order to avoid the loss of a right.

In its submission of 15/11/2016, the opponent’s representative explained that upon filling in the opposition form on-line, it was unable to attach the certificate of its earlier international registration. It claims that this option is only available when the earlier right is either an EUTM or a national mark, and that there is no section related to the attachment of the evidence of an earlier international trade mark registration. Furthermore, by having filed the opposition without having been able to attach the certificate for its earlier mark, the opponent’s representative believed that the Office had all the necessary information and that the procedure would be the same as if an earlier EUTM had been invoked. The opponent’s representative further claims that it was not informed that it would subsequently need to submit a certificate in order to substantiate the earlier right.

As stated above, the Office informed the parties of the relevant time limits for the proceedings by communication of 21/03/2016, and the opponent was given until 26/07/216 to submit evidence for the substantiation of the earlier right and further material. Upon the opponent’s request, the above time limit was extended until 26/09/2016.

In addition, attached to the letter were four pages with ‘Information on the Proceedings’. Point a) refers to the time limit for the opponent to substantiate the earlier rights and submit further material, and expressly states that: ‘in particular, you are required to substantiate all the earlier rights on which the opposition is based, that is, to prove the existence, ownership and validity of the rights by submitting evidence and, within the same time limit, all appropriate translations and colour representations.’ Furthermore, it states that the Office will not inform the opponent whether the evidence is missing, that it is the opponent’s responsibility to check whether this has been or must still be done, and that the opposition will be rejected without any examination of its merits (Rule 20(1) EUTMIR), inter alia, whenever the evidence substantiating the earlier right(s) on which the opposition is based is not filed within the time limit.

This information sheet, furthermore, contains a section on the evidence required to substantiate the opposition. With regard to oppositions based on Article 8(1) EUTMR and an earlier registration or trade mark other than an EUTM, it clearly sets out the particulars to be proven and the means of evidence in order to do so.

Therefore, the Opposition Division concludes that the opponent’s representative did not take all due care to observe the time limit for substantiating the earlier right.

It falls to the professional representative to ensure that he or she is aware of the differences between the kinds of earlier rights upon which an opposition can be based and, if needed or for clarification purposes, to refer to the correct part of the relevant regulations and the Office’s Guidelines for Examination of European Union Trade Marks. In the present case, the opposition is based on an international registration designating the European Union, not a European Union trade mark. Accordingly, the particulars to be proven in order to substantiate that earlier right and the means of evidence in order to do so are those in relation to an earlier registration or trade mark other than an EUTM.

The opponent’s representative could have consulted Commission Regulation (EC) No 2868/95 of 13 December 1995 (EUTMIR), Rule 19, on the substantiation of the opposition, or the Office’s Guidelines for Examination of European Union Trade Marks, Part C, Opposition, Section 1, Procedural Matters, paragraph 4.2.3, where the procedure to follow is explained:

‘4.2.3 Trade mark registrations or applications that are not EUTMs

Rule 19(2)(a)(i)-(ii) EUTMIR

To substantiate an earlier trade mark application or registration the opponent must provide the Office with evidence of its filing or registration. The Office accepts the following documents:

• certificates issued by the appropriate official body
• extracts from official databases
• extracts from official bulletins of the relevant national trade mark offices and WIPO.

[…]

As regards international registrations, the following databases are accepted (judgment of 26/11/2014, T-240/13, Alifoods, EU:T:2014:994):

• ROMARIN (the ‘short’ version of the extract being sufficient as long as it contains all the necessary information, but the extended or long version of the WIPO extract being preferable as it contains all the individual indications for each designated country, including the Statement of Grant of Protection)
• TMview (as far as it contains all the relevant data, see above).’

Moreover, the opponent’s representative was informed about the particulars and means of evidence to be provided by the Office’s communication of 21/03/2016 and the information sheet attached thereto.

As to the opponent’s claim that it was never expressly requested to file the relevant certificate, it must be pointed out that the obligation for the Opposition Division to invite the opponent to remedy the deficiencies of the content of the notice of opposition does not extend to the documents for substantiation of the opposition. It is settled case-law that furnishing official documents as proof of the existence and validity of the earlier rights is not a matter of the admissibility of the opposition, but a matter of the substantiation of the opposition. Accordingly, contrary to the opponent’s contention, the Opposition Division had no obligation to inform the opponent of any substantiation deficiency in the course of the opposition proceedings (30/06/2004, T-107/02, Biomate, EU:T:2004:196, § 23).

The reasons set forth by the opponent are not sufficient under the terms of Article 81(1) EUTMR, since human errors are not considered exceptional circumstances under which restitutio in integrum can be granted. Likewise, it has not been proven that there were exceptional circumstances or unforeseeable events that were beyond the control of the opponent’s representative (see also the Office’s Guidelines for Examination of European Union Trade Marks, Part A, General Rules, Section 8, Restitutio in Integrum, paragraph 2.1).

d)        Conclusion

Taking into account the evidence and explanations given by the opponent’s representative, the Opposition Division concludes that the opponent’s representative did not show that there were exceptional circumstances that were beyond its control and that it had taken ‘all due care’ required by the circumstances in order to avoid a loss of a right.

The purpose of Article 81 EUTMR is to provide applicants and EUTM proprietors with the possibility to remedy an omission due to exceptional and unforeseeable circumstances but not to remedy simple negligence or errors on the part of the opponent or its representative. This is an exceptional institution and the conditions for its application have to be construed strictly.

Therefore, the request for restitutio in integrum must be rejected as unfounded.

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be 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 shall 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 shall 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 21/03/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit was subsequently extended and expired on 26/09/2016.

The opponent submitted the required evidence on 15/11/2016, that is, only after the expiry of the abovementioned time limit.

According to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

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 shall 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, it 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

Finn PEDERSEN

Ferenc GAZDA

Natascha GALPERIN

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