OPPOSITION No B 2 852 179
US Pharmacia International, Inc., 966 Hungerford Dr Ste 3B, Rockville Maryland 20850, United States of America (opponent), represented by Kondrat & Partners, Al. Niepodległości 223/1, 02-087 Warszawa, Poland (professional representative)
a g a i n s t
Partrik Mueh, 123, Melita Street VLT 1123, Malta (applicant), represented by Gianluca Cappitta, 66, Classic Court Triq il-Karmelitani, Santa Venera SVR 1724, Malta (professional representative).
On 22/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 852 179 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 127 441, namely against all the goods and services in Classes 5 and 35. The opposition is based on the Polish registered trade marks listed below. The opponent invoked Article 8(1)(b) EUTMR.
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VigorField. |
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Earlier trade marks |
Contested sign |
RESTITUTION IN INTEGRUM
The opposition is based on the above Polish trade mark registrations. On 28/03/2017, the Opposition Division invited the opponent to substantiate the earlier rights and submit further facts and evidence to support the opposition on or before 02/08/2017. However, the opponent did not submit any evidence concerning the substantiation of the earlier trade marks within this time limit.
On 16/08/2017, the Opposition Division informed the opponent that, as the earlier rights claimed as the basis for the opposition had not been substantiated, the Office would rule on the opposition on the basis of the evidence before it.
On 22/08/2017, the opponent filed a request for restitutio in integrum in relation to the time limit for substantiation of the earlier right and asked the Office to take into consideration the documents sent together with this request, namely a copy of the registration certificates of the abovementioned earlier marks together with their translations. The request indicates that the evidence to substantiate the earlier rights had not been sent due to "errors in the work of the software program 'Kancelaria Prawna'", used by the office of the opponent's representative. According to the representative, between 10/03/2017 and 07/08/2017, there were a series of interruptions in the program work, causing program errors, that the opponent's representative was unaware of.
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 will, 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 will 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 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. The application for restitutio in integrum was received on 22/08/2017. In the same communication, the opponent enclosed proof of the payment which reached the Office on 23/08/2017. The application for restitutio in integrum is, therefore, deemed to have been filed on 23/08/2017.
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, which in the present case corresponds to the opponent’s time limit to substantiate its opposition, which ended on 02/08/2017. Taking the above into account, the cause of non-compliance has to be considered as removed in the present case on 16/08/2017, when the Office officially informed the opponent that it had failed to substantiate its earlier rights within the deadline. Consequently, the two-month time limit to file a request for restitutio in integrum expired on 16/10/2017.
On 23/08/2017, the opponent filed a request for restitutio in integrum. That is less than two months after the removal of the cause of non-compliance with the time limit and within the year following the expiry of the deadline.
Finally, as required by Article 81(2) EUTMR, the omitted act (i.e. submitting a copy of the registration certificate of the earlier right or extract from an official database in the language of the proceedings within the prescribed period) is deemed to have been completed within the two-month period beginning on 16/08/2017, as the relevant documents deemed to have been filed on 23/08/2017. Consequently, the request for restitutio in integrum has to be considered admissible, also taking into account that the application does not refer to a time limit excluded from restitutio in integrum pursuant to Article 81(5) EUTMR.
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:
- the person requesting the restitutio in integrum has been unable to comply with 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.
i. Non-observance of a time limit
One of the basic requirements for a request for restitutio in integrum to be granted is that the party to the proceedings ‘was unable to observe a time limit vis-à-vis the Office’. The opponent was given until 02/08/2017 to substantiate its earlier rights and submit further material in support of its opposition. The corresponding documents are deemed to have been filed on 23/08/2017, that is after the expiry of the time limit. It follows from the above that the opponent was not able to observe the time limit for substantiation set by the Office.
ii. Loss of right
Another basic requirement for an application for restitutio in integrum to be granted is that the non-observance of a time limit has caused a loss of right. In these proceedings, the opponent has lost the right to substantiate its opposition. This loss of right is a direct consequence of the fact that the opponent did not submit the relevant documents substantiating the earlier Polish trade mark registrations within the set deadline, which expired on 02/08/2017. In practice, this means that the opponent has lost the right to validly oppose the registration of the EUTM application, as its opposition will be considered unsubstantiated.
iii. Due care
It should be observed in this respect that the requirement to exercise due care lies in the first instance with the opponent. Thus, if the opponent awards the mandate to legally represent it in appeal proceedings to the representative, it must ensure that the person chosen offers the assurance necessary to enable it to be assumed that those tasks will be carried out properly. Moreover, since those tasks have been delegated, the person chosen is subject to the requirement to exercise due care in the same way as the opponent. Since that person acts on behalf of and in the name of the opponent, its actions must be regarded as being the opponent’s actions (13/05/2009, T-136/08, Aurelia, EU:T:2009:155, § 15; 15/09/2011, T-271/09, Romuald Prinz Sobieski zu Schwarzenberg, EU:T:2011:478, § 54; 25/04/2012, T-326/11, BrainLAB, EU:T:2012:202, § 38). If the opponent’s representative fails to exercise the due care required by the circumstances, this breach therefore has to be attributed to the opponent.
For a representative, the standard of due care required for the avoidance of loss of time limits will generally be higher than for a party to the proceedings before the Office. Careful consideration of the time-limits is part of the basic duties of a trade mark attorney or professional representative. Thus, a representative must put in place a system of internal control and monitoring time-limits that generally excludes the involuntary non-observance of time-limits. It follows that restitutio in integrum may be granted only in the case of exceptional events, which cannot be predicted from experience (25/04/2012, T-326/11, BrainLAB, EU:T:2012:202, § 41, hereby referring to 13/09/2009, T-136/08, Aurelia, EU:T:2009:155, § 26; see also, 05/07/2013, R 194/2011-4, PAYENGINE / SP ENGINE, § 15 and 25/04/2013, R 1383/2012-5, OPEN PALM, § 13).
Therefore, a trade mark attorney or professional representative has to manage his office in a way which ensures that, in the normal course of business and according to his instructions, time-limits cannot be missed. In order to avoid mistakes, he has to do everything possible within what is considered usual under the circumstances. In particular, he has to provide for an effective system of review of all time limits.
In particular, when using a computerised reminder system, the due care required by the circumstances demands that the system should be capable of detecting and correcting any foreseeable error in both the performance of the tasks of the staff and the functioning of the computerised system (13/05/2009, T-136/08, Aurelia, EU:T:2009:155, § 27).
Having examined the opponent’s request and explanations, the Opposition Division finds that the reasons set forth are not sufficient under the terms of Article 81(1) EUTMR and it is concluded that all due care has not been taken to substantiate the earlier trade mark within the deadline.
Indeed, as explained by the opponent's representatives, several interruptions occurred in the functioning of the program used by the representative's office. The representative indicates that he was however not immediately aware of the effect of such interruptions on the display of the reminders of upcoming deadlines. According to the representative, such events cannot be predicted from experience. In support of its request, the representative encloses:
- copy, with translation, of its application for the suspension of a deadline to submit a translation of a European patent and to accept such translation as submitted within the deadline together with proof of submission to the Polish Patent Office of 19/07/2017,
- decision, with its translation, of the Polish Patent Office of 09/08/2017.
The Opposition division does not agree that such events cannot be predicted. Errors in the management of files caused by malfunctions of computerised systems or programs are foreseeable errors. Indeed, it is not uncommon for computer systems and software to either crash or malfunction and due diligence also requires the implementation of anticipation measures to prevent undesirable effects on the opponent’s core activities.
Consequently, human or other technical must be taken in advance in order to prevent or mitigate the possible impact of IT issues on one of the opponent’s most relevant duties, complying with deadlines. This is all the more to be expected in the present case since the representative indicates that errors in the functioning of the software program had already occurred a few months before the relevant deadline. While it may well be so that the representative did not or could not immediately measure the impact of such errors on the management of files and more precisely on the reminders of time limits, it remains that the occurrence of errors and issues with IT systems and programs used by the representative should have prompted the latter to check whether or not these had had an impact on any running time limits. In this respect, it must also be noted that it can be inferred from the proceedings before the Polish Patent Office and the dates that are relevant to those proceedings that the representative was already aware in July 2017 of similar problems arising from errors in its IT system or program. Therefore, it is all the more surprising that such events should not have prompted the representative to check whether other running time limits had been affected by the program failures. Any circumstance in the daily work of a law firm such as errors in IT systems and programs should have triggered special measures to ensure that the proper filing of documents was not affected by such errors.
Apart from explaining the failures in the functioning of the specific program used by its firm, the opponent did not explain how work is organised within its firm to properly ensure that a loss of right, due to errors in computer systems and software, is generally excluded. The internal organisation is the result of a decision about which system to use and which security measures are taken to secure the compliance of deadlines. It is the representative’s choice to work with a tool that has no human or other technical backup system that ensures deadline reminders are properly issued.
While it seems that the Polish Patent office has taken a different view with regard to the submission of a translation relating to a patent, it must be noted in the first place that decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T-292/08, Often, EU:T:2010:399).
Nevertheless, even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.
In the present case, the previous case referred to by the opponent is not relevant to the present proceedings as it refers to different proceedings (patents) which are not governed by the same legal framework as the earlier rights her at issue, namely Polish registered trade marks.
The reasons set forth by the opponent’s representative are not sufficient under the terms of Article 81(1) EUTMR, since 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 Guidelines for Examination in the Office, Part A, General Rules, Section 8, Page 3). The Office considers that errors in the management of files caused by the representative’s 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).
d) Conclusion
Taking into account the arguments of the opponent’s representative, the Opposition Division concludes that the opponent’s representative did not show that there were exceptional circumstances which were beyond its control and that it had taken ‘all due care’ required by the circumstances in order to avoid a loss of right. Therefore, the Opposition Division rejects the request for restitutio in integrum and will not take into account the trade mark registrations certificates deemed to have been filed on 23/08/2017. The purpose of Article 81 EUTMR is to provide parties in proceedings before the Office with the opportunity to remedy an omission due to exceptional and unforeseeable circumstances, not to remedy mere negligence or errors on the part of the opponent or its representative. Observing time limits is a matter of public policy, and granting restitutio in integrum can undermine legal certainty. Consequently, the conditions for the application of restitutio in integrum have to be interpreted strictly (19/09/2012, T-267/11, VR, EU:T:2012:1249, § 35).
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 marks on which the opposition is based.
On 28/03/2017, 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 02/08/2017.
The opponent did not submit any evidence concerning the substantiation of the earlier trade marks.
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 marks or earlier rights, 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, 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
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Begoña URIARTE VALIENTE |
Martina GALLE |
Benoit VLEMINCQ |
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.