INTERIM DECISION

of the Fifth Board of Appeal

of 16 January 2017

In Case R 912/2016-5

PANOTEC S.R.L.
Via G. Polese, 2 31010 Cimadolmo (TV) Italy	Applicant / Appellant

represented by MAROSCIA & ASSOCIATI S.R.L., Piazza del Castello, 26, 36100 Vicenza, Italy

v

NovoPlan GmbH
Robert-Bosch-Str. 41 D-73431 Aalen Germany	Opponent / Respondent

represented by DR. WEITZEL & PARTNER PATENT- UND RECHTSANWÄLTE MBB, Friedenstr. 10, 89522 Heidenheim, Germany

APPEAL relating to Opposition Proceedings No B 2 467 036 (European Union trade mark application No 13 264 296)

THE FIFTH BOARD OF APPEAL

composed of G. Humphreys (Chairperson), A. Kralik (Rapporteur) and A. Pohlmann (Member)

Registrar: H. Dijkema

gives the following

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Decision

Summary of the facts

1. By an application filed on 17 September 2014, PANOTEC S.R.L. (‘the applicant’) sought to register the word mark

PANOTEC

for the following list of goods :

Class 7 – Machines for use in the production of packaging; Machines and installations for the packaging industry and components therefor; Packaging machines;

Class 16 – Cardboard; Cardboard articles; Boxes of cardboard or paper; Cardboard packaging; Wrapping paper.

2. The application was published on 31 October 2014.

3. On 30 January 2015, NovoPlan GmbH (‘the opponent’) filed an opposition against the registration of the published trade mark application for part of the goods, namely the goods in Class 7 (‘the contested goods’).

4. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.

5. The opposition was based on the following earlier rights (‘the earlier mark(s)’):

• EUTM No 8 883 571 of the word mark

Planoteq

filed on 29 January 2010 and registered on 22 June 2010 for the following goods and services (‘the earlier goods and services’):

Class 6 – Aluminium, alloys of common metal; cast iron, raw or semi-worked;

Class 7 – Surface-coated machine parts of metal;

Class 40 – Treatment of materials; coating of common metal surfaces; coating of metal and plastic parts; injection moulding.

• EUTM No 5 881 545 of the word mark

PlanoTek

filed on 8 May 2007 and registered on 24 April 2008 for the following goods and services:

Class 6 – Aluminium, alloys of common metal; cast iron, raw or semi-worked;

Class 7 – Surface-coated machine parts of metal;

Class 40 – Treatment of materials; coating of common metal surfaces; coating of metal and plastic parts; injection moulding.

6. By decision of 18 March 2016 (‘the contested decision’), the Opposition Division upheld the opposition for all the contested goods based on the earlier EU trade mark registration No 5 881 545.

7. On 17 May 2016, the applicant filed an appeal against the contested decision, requesting that its EUTM be allowed to proceed to registration for all the goods.

8. The statement of grounds of the appeal was received on 18 July 2016. The applicant in its statement of grounds stated, inter alia, that there is no evidence, that the opponent has not effectively used the earlier marks for the earlier goods within the five years following the date of registration and therefore the marks should be considered partially lapsed in accordance with Article 15 EUTMR for the purposes of these proceedings. Furthermore, the applicant stated its intention to file an action for revocation in accordance with Article 51(1)(a) EUTMR against the earlier marks.

9. No observations in reply were filed.

Reasons

10. The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.
11. The case is to be remitted to the Grand Board in accordance with Article 1b(1) of the Commission regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonization in the Internal Market (as amended). According to this provision a Board may refer a case allocated to it to the Grand Board if it believes that it is justified by the legal difficulty or legal importance.
12. The case is legally important in the sense of Article 135(3) EUTMR.
13. The present case centres upon the issue of whether – in the context of on-going opposition proceedings that have reached the appeal stage- the Boards may adjudicate on the merits of the opposition where, after the notice of appeal in the opposition has been filed, a request for revocation is lodged by the applicant (appellant) (but without any petition for retroactive effect) against the earlier marks?
14. As indicated above, on 18 October 2016, the applicant filed a cancellation request against both marks on the basis of Article 51(1)(a) EUTMR and no request for an earlier date in accordance with Article 55(1), second sentence has been made. Consequently, even if those proceedings were successful, the revocation of the marks would only take effect as from the date of the application for revocation and not retroactively. Therefore the effects of revocation would not fall into the relevant period in which the opposition should be substantiated and in which the contested decision was adopted.
15. Consequently the situation at hand raises three important questions.
16. First, the question arises as to the relevant date at which the Board of Appeal is required to adjudicate on an appeal. It would be appropriate to ascertain if the Boards are expected to give a ruling on the merits of the appeal against the decision of the Opposition Division provided that the opposition is based on valid earlier rights which are subject to a revocation application?
17. Secondly, if the earlier rights upon which an opposition is based need to be valid not only at the time of filing of a proceeding but also until its conclusion (including the appeal stage) the question to be addressed is whether the Boards should suspend the appeal proceedings, pending the outcome of the cancellation proceedings?
18. Thirdly, provided that there are some circumstances which may point to negligence or delaying tactics on the part of the applicant’s representative, do the criteria for accepting belated evidence apply by analogy and, where relevant, to the discretion of whether to suspend the proceedings?

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Order

On those grounds,

THE BOARD

hereby:

Decides to remit the case to the Grand Board.

Signed G. Humphreys

Signed A. Kralik

Signed A. Pohlmann

Registrar: Signed H.Dijkema