OPPOSITION No B 2 809 609

Sang-hyun Yoon (Sanghyeon-dong, Sanghyeon Maeul Hyundei, Sungwoo Apt.) 296-1105, 100, Sanghyeon-ro, Suji-gu, Yongin-si, Gyeonggi-do, Republic of Korea (LA) (opponent), represented by Schoppe, Zimmermann, Stöckeler, Zinkler, Schenk & Partner mbB Patentanwälte, Radlkoferstr. 2, 81373 München, Deutschland (professional representative)

a g a i n s t

Weiyun Liu, Booth 5, Street 1, Fuxing Motor Fittings Market, Luochongwei, Baiyun, Guangzhou, People's Republic of China (applicant), represented by José Izquierdo Faces, Iparraguirre 42 – 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).

On 26/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 809 609 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 of European Union trade mark application No 15 742 951  (figurative mark) in Classes 18 and 25. The opposition is based on international trade mark registration No 1 131 270 (figurative mark) designating the European Union. The opponent invoked Article 8(1)(a) and (b) EUTMR.

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 17/01/2017 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 22/05/2017.

The opponent did not submit any evidence concerning the substantiation 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.

RESTITUTIO IN INTEGRUM

Parties to proceedings before the Office may have their rights reinstated (restitutio in integrum) if they were unable to meet a time limit vis-à-vis the Office despite taking all due care required by the circumstances, provided that the failure to meet the time limit had the direct consequence, by virtue of the provisions of the Regulations, of causing a loss of rights or loss of means of redress (28/06/2012, T-314/10, Cook’s, EU:T:2012:329, § 16-17).

On 21/06/2017 the opponent requested to grant Restitutio in integrum in order to substantiate the earlier mark. With the request the opponent paid the fee for Restitutio in Integrum and also submitted the certificate of the earlier mark.

The opponent explained that on 09/05/2017 one of the opponent’s paralegals, Ms. Tanja Wengenroth, prepared a letter to the EUIPO including the extract of the official register (Romarin) of the international trademark No 1 131 270 to substantiate the earlier right. The undersigned representative signed this letter on the same day and forwarded it to Mr. Tanja Wengenroth, in order to file the signed submission with the EUIPO via facsimile. However, Ms. Tanja Wengenroth did, inadvertently not fax the submission and hence, the EUIPO did not receive the submission.

After receiving the Official communication of EUIPO the opponent investigated this matter. As a result of the investigation, the opponent became aware that the submission is not included in the file. Mr. Tanja Wengenroth cannot remember what she has done with the submission and why she did not fax it to the EUIPO. As an evidence, a Declaration of Ms. Tanja Wengenroth was attached.

There are two requirements for restitutio in integrum (25/04/2012, T-326/11, BrainLAB, EU:T:2012:202, § 36):

a) that the party has exercised all due care required by the circumstances, and

b) that the non-observance (of a deadline) by the party has the direct consequence of causing the loss of a right or means of redress.

In this case an error by the opponent’s paralegal does not constitute an exceptional event. The situation cannot be regarded an exceptional or unforeseeable event. The error or delay of the paralegal cannot be accepted as a reason for restitutio in integrum. Consequently, the fact that the opponent’s paralegal forgot to fax the submission and to put it into the file does not warrant restitutio in integrum.

The opponent’s request 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

André BOSSE

Judit NÉMETH

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