Stratus | Decision 063/2016-4
Date Published: Sep 28, 2017
THE BOARDS OF APPEAL
DECISION of the Fourth Board of Appeal of 9 December 2016
In Case R 1063/2016-4
Stratic Lederwaren Jacob Bonifer GmbH Kasseler Str. 14 D-63110 Rodgau Germany Opponent / Appellant
represented by Lextm Rechtsanwälte, Friedensstr. 11, D-60311 Frankfurt a. Main, Germany
v
Clifford Lai 78 Coweeset Dr. Brockton Massachusetts MA02301 United States of America Applicant / Respondent
represented by Cabinet Chaillot, Avenue de L'Agent Sarre 16-20, F-92703 Colombes Cedex, France
APPEAL relating to Opposition Proceedings No B 2 469 214 (European Union trade mark application No 13 286 224)
THE FOURTH BOARD OF APPEAL
composed of D. Schennen (Chairperson), L. Marijnissen (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 By an application filed on 23 September 2014, Clifford Lai (‘the applicant’)
sought to register the figurative mark in black and white
2
as a European Union trade mark for ‘Pocket wallets; School bags; School satchels; Handbags; Travelling trunks’ in Class 18.
2 On 27 January 2015, a notice of opposition was filed by Stratic Lederwaren Jacob Bonifer GmbH (‘the opponent’) based on earlier international registration No 1 000 804 designating the European Union for the word mark
Stratic
3 In the notice of opposition it was indicated that the mark was filed on 28 May 2009 and registered on 24 November 2008. It was further indicated that the grounds for opposition were those laid down in Article 8(1)(b) and 8(5) EUTMR, that the opposition was directed against all the goods of the application and that it was based on all the goods and services covered by the earlier mark for which reputation was claimed. The notice of opposition, however, did not contain any reference to the goods and services on which the opposition was based.
4 On 4 February 2015, the Office informed the opponent that the mere indication that the opposition was based on ‘all the goods/services for which the earlier mark is registered/applied for’ was not sufficient to identify the goods and services on which the opposition was based. Pursuant to Rule 15 and 17(4) CTMIR, this deficiency had to be remedied by 4 April 2015, if not the opposition would be rejected as inadmissible. The communication also indicated that documents that might be submitted with a view to remedy the above deficiency might not be sufficient for substantiation of the opposition.
5 In its response to this deficiency letter, by fax dated 5 February 2015 and received by the Office on 10 February 2015, the opponent sent the Office the first page of an extract from the EUIPO-online database concerning the earlier mark. It referred to the list of goods and services as shown on this single page in order to remedy the deficiency.
6 On 13 February 2015, a communication was sent to the opponent by the Office informing that the opposition had been found admissible and that the time-limit to substantiate the opponent’s earlier right pursuant to Rule 19 CTMIR expired on 18 June 2015, later extended until 1 October 2015. In the attached information sheet it was explained that for the substantiation of an earlier registration or trade mark (other than a European Union trade mark) all the
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formal and substantive particulars had to be shown by the submission of a registration certificate or any other equivalent official document. It also explained that the Office would not inform whether the required evidence was missing and that the opposition would be rejected without any examination of its merits (Rule 20(1) CTMIR) whenever the evidence substantiating the earlier right was not filed in time, deemed insufficient or did not comply with the requirements set in the regulations.
7 On 29 May 2015 the applicant filed a proof of use request. Evidence in this
respect was submitted by the opponent on 1 October 2015.
8 However, neither within the time-period to substantiate the opposition, nor at any other moment during the proceedings before the Opposition Division did the opponent submit evidence with the aim to substantiate its earlier right.
9 By decision of 5 April 2016, the Opposition Division rejected the opposition in
its entirety and ordered the opponent to bear the costs.
10 It reasoned that as the opposition was based on a registered mark which was not a European Union trade mark, the opposing party had to provide a copy of the relevant registration certificate or an equivalent document emanating from the administration by which the trade mark was registered, pursuant to Rule 19(2) (a)(ii) CTMIR. The opponent did not submit any evidence concerning the substantiation of the earlier mark. According to Rule 20(1) CTMIR the opposition was rejected as unfounded.
11 On 10 June 2016, the opponent filed a notice of appeal, followed by a statement of grounds on 10 August 2016. It requests that the Board annul the decision of the Opposition Division.
12 It argues that the Office erroneously did not take into consideration that the opponent filed an extract from the electronic database of the EUIPO on 5 February 2015 with the aim of showing the validity and the scope of the earlier mark. The information in this copy is confirmed in the extract from the ROMARIN database of WIPO regarding the earlier mark as submitted with the statement of grounds of appeal. It argues that this supplementary evidence under Rule 50(1) EUTMR can and should be taken into account, making reference to the decision of 03/03/2016, 339/2015-5, Device of a cloud resembling a safe / ICLOUD et al. It further argues that there would be a likelihood of confusion bearing in mind the strong similarity of the signs and the similarity of the goods covered.
13 The applicant did not file any observations in reply.
Reasons
14 The appeal is not well founded. The opposition has to be rejected because of the failure to substantiate the only earlier right on which the opposition is based pursuant to Rule 19 CTMIR.
15 Rule 19(2) CTMIR provides that within the time-limit set by the Office pursuant to Rule 19(1) CTMIR, the opponent shall file proof of the existence, validity
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and scope of protection of its earlier rights. Rule 20(1) CTMIR provides that if within the said time-limit this has not been done, the opposition shall be rejected as unfounded.
16 Furnishing official documents as a proof of the existence, validity and scope of protection of the earlier right is not a matter of admissibility of the opposition, but a matter of substantiation of it, i.e. of proof whether the alleged earlier right actually exists and is in force (13/06/2002, T-232/00, Chef, EU:T:2002:157, § 33, 36; 17/06/2008, T-420/03, BoomerangTV, EU:T:2008:203, § 65). The Office is not obliged to point out to the opponent the deficiencies in its proof (30/06/2004, T-107/02, Biomate, EU:T:2004:196, § 70).
17 The opposition is based on an earlier international registration designating the European Union. As this is a ‘trade mark which is not a European Union trade mark’ Rule 19(2)(a)(ii) CTMIR applies. This Rule requires evidence of the registration in the form of a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, or equivalent documents emanating from the administration by which the trade mark was registered.
18 In this respect the Board emphasizes that nothing in Rule 19 CTMIR or in any Article of the EUTMR or the CTMIR relieves international registrations designating the European Union from this obligation, i.e. the filing of the relevant certificates or equivalent documents emanating from the administration by which the trade marks are registered. It also emphasises that for an international registration this administration is the WIPO and not the Office. This is all in conformity with previous case law of the Boards and the General Court (amongst others, decisions of 17/11/ 2011, R 200/2011-4, TIEGERBRÄU / TIGER, § 20-24; 10/09/2013, R 897/2013-4, CigGo / CIGO et al. § 11-15; 24/09/2013, R 585/2013-4, LAFONTE / LAFONT, § 10-16; 07/10/2013, R 1088/2013-4, ZUMBALOCCO / ZUMBALI, § 12-17; 25/02/2013, R 407/2012-4, ALIFOODS / ALDI, § 13, the latter decision confirmed by the General Court on 26/11/2014, T-240/13, Alifoods, EU:T:2014:994, § 28-32).
19 Also, the information letter of the Office dated 13 February 2015 indicated that for earlier registrations other than European Union trade marks all the formal and substantive particulars must be shown by submitting the registration certificate or an equivalent official document. The only exception explicitly referred to concerns where an opposition is based on earlier European Union trade mark applications or registrations, in which case the opponent does not need to submit any evidence, but that is not the case here.
20 Contrary to what it argues in the appeal, at first instance the opponent failed to submit any evidence with the aim to substantiate the earlier mark. The document it submitted on 10 February 2015, dated 5 February 2015, concerns the first page of an extract from the EUIPO-database filed with the aim to remedy the deficiency notified by the Office as regards the indication of the list of goods and services on which the opposition was based in order to make sure that the opposition would be admissible.
21 Apart from the fact that the document referred to in the previous paragraph was obviously not filed for substantiation purposes, it is even not relevant in this
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respect. What was submitted is only a part, namely the first page, of an extract of the EUIPO-database. First of all, on this page crucial information for substantiation purposes like for instance the name and details of the trade mark owner are missing. Moreover, an extract from the EUIPO-database is not a document emanating from the administration by which the trade mark was registered which is the WIPO and not the Office, see also paragraph 18 above.
22 To conclude, the opponent failed to substantiate the only earlier right on which the opposition was based. The Opposition Division correctly rejected the opposition as unfounded according to Rule 20(1) CTMIR.
23 The evidence filed by the opponent for the first time before the Boards of
Appeal cannot be taken into account.
24 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 Board and the filing of an appeal does not 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. As indicated above, at first instance there was an absolute lack of evidence, so the evidence submitted for the first time before the Board is by definition not additional or supplementary.
25 The straight-forward rejection of the documents filed by the opponent at the appeal stage is in line with the case-law of the European Court which decided that the same principle applies in case no proof of use of the mark concerned is submitted at all within the time-limit set by the Office pursuant to Rule 22(2) CTMIR. In that situation the opposition must be automatically rejected. It is only when proof of use relevant for the purposes of establishing genuine use has been submitted within the relevant time-limit that proceedings are to run their course and that the Office has to exercise its discretion pursuant to Article 76(2) EUTMR (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 28, 29).
26 For the sake of completeness the Board adds that even if one were to hold that the Board enjoys the discretion to accept the late filed ROMARIN extract from WIPO, it would exercise such discretion against the opponent.
27 From the outset, it speaks against such discretion to be exercised in the opponent’s favour that the legitimate interest of the applicant has to be taken into account as dictated by the principle of equality of arms. In the present case, the applicant had obtained a decision from the Office to reject the opposition which was lawfully taken. Exercising discretion in favour of the opponent at this stage would mean exercising it against the applicant, although the applicant had contributed nothing to the facts relevant for the admission or non-admission of the documents and although their belated filing was in no way influenced by the procedural behaviour of the applicant. This alone is a strong reason against exercising discretion in favour of the opponent.
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28 Moreover, the requisite evidence for the substantiation of the earlier mark is set out precisely and exhaustively in Rule 19(2)(a)(ii) CTMIR. Also, the information sheet sent to the opponent on 13 February 2015 explains the exact requirements in this respect. The opponent was therefore deemed to be aware of the precise documents which it had to produce. In such circumstances, the Board shall exercise its discretion restrictively and may allow the late submission of such evidence only if the surrounding circumstances are likely to justify the opponent’s delay in the submission.
29 Such circumstances do not exist. First of all, at first instance, there was no attempt from the opponent at all to substantiate its earlier right. Moreover, a ROMARIN extract from WIPO as now filed for the first time before the Boards would have been available at the time of substantiation. The opponent could have filed the required evidence within the relevant time-limit set by the CTMIR but it simply overlooked to do so. It did not submit any justified and convincing explanation as to why this happened.
30 Taking into account the above considerations, there would be no reasons why the Board should give the opponent the opportunity to discharge a duty that it should and could have discharged at the prescribed time. By no means, there would be a need for the Board to rule on the possible relevance of the belated evidence or to determine whether the stage of the proceedings at which the late submission took place precludes such evidence from being taken into account.
31 As regards to the decision of the Fifth Board of Appeal to which the opponent refers, the Board states that the legality of the decisions of the Boards must be assessed solely on the basis of the Community Trade Mark Regulations, as interpreted by the Community judicature, and not on the basis of a previous decision-making practice of the Office (13/02/2008, C-212/07 P, Hairtransfer, EU:C:2008:83, § 43; 27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 66). Moreover, each case has to be decided on its own merits. In the appeal referred to the earlier filed documents were complete extracts from the EUIPO database, were submitted with the clear aim to substantiate the earlier mark and the applicant was invited to comment on this evidence. This is not the case here.
32 To conclude, the earlier mark on which the opposition was based has not been substantiated. The opposition shall be rejected pursuant to Rule 20(1) CTMIR. An assessment of the merits of the opposition, including whether a likelihood of confusion would exist, is not required.
33 The appeal shall be dismissed.
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Costs
34 Since the opponent (appellant) is the losing party within the meaning of Article 85(1) EUTMR, it must bear the costs incurred by the applicant (respondent) in the opposition and the appeal proceedings. For the opposition proceedings, the Opposition Division correctly decided that the opponent shall bear the costs.
Fixing of costs
35 In accordance with Article 85(6) EUTMR and Rule 94(7)(d)(ii) and (vi) CTMIR, the Board fixes the amount of representation costs to be paid by the appellant to the respondent with respect to the appeal proceedings at EUR 550 and for the respondent’s representation in the opposition proceedings at EUR 300. The total amount is EUR 850.
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Order
On those grounds,
THE BOARD
hereby:
1. Dismisses the appeal; 2. Orders that the appellant shall bear the costs of the appeal proceedings; 3. Fixes the total amount of costs to be paid by the appellant to the
respondent for the opposition and appeal proceedings at EUR 850.
Signed
D. Schennen
Signed
L. Marijnissen
Signed
C. Bartos
Registrar:
Signed
H.Dijkema
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