MOBI-AIR | Decision 452/2016-1
Date Published: May 1, 2018
of the First Board of Appeal
of 10 January 2017
In Case R 1452/2016-1
MobiAir Pte. Ltd
1 Raffles Place, Floor 24
Applicant / Appellant
represented by TRADE MARK WIZARDS LIMITED, 54 Hillbury Avenue, Harrow HA38EW, United Kingdom
APPEAL relating to European Union trade mark application No 13 463 088
THE FIRST BOARD OF APPEAL
composed of Th. M. Margellos (Chairperson and Rapporteur), M. Bra (Member) and C. Rusconi (Member)
Registrar: H. Dijkema
gives the following
Summary of the facts
- By an application filed on 14 November 2014, MobiAir Pte. Ltd (‘the applicant’) sought to register the figurative mark below for various goods and services in Classes 7, 11 and 35:
- As the representative the application specified Jeanette Wood with the EUIPO ID No 60 896.
- On 10 December 2015, the Office entered the recordal for the change of the representative to Trademark Eagle Limited with ID No 75 276.
- On 14 March 2016, the Office received the request for the withdrawal of Trademark Eagle Limited as the representative.
- On 14 March 2016, the Office notified Trademark Eagle Limited of the deletion of Trademark Eagle Limited as the representative.
- On 15 March 2016, the Office notified the applicant that a representative had not been appointed pursuant to Article 92(2) EUTMR and invited the applicant to appoint a representative from within the EU within two months.
- The applicant did not reply.
- On 8 June 2016, the examiner refused the application pursuant to Rule 9(4) CTMIR since a representative had not been appointed from within the EU in accordance with Article 92(2) and 93(1) EUTMR.
- On 4 August 2016, the applicant informed the Office of the appointment of the new representative.
- On 6 August 2016, the Office made the recordal of the appointment of the new representative.
- On 8 August 2016, the applicant filed an appeal against the contested decision together with the statement of grounds of the appeal.
Grounds of appeal
- The applicant points out there was a breakdown in the relationship between the applicant and the previous representative, which resulted in the previous representative withdrawing as representative and that the examiner’s communication of 15 March 2016 was not received in due time.
- The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.
- The situation that has arisen in this case has also arisen in previous decisions of the Boards (see for example, decision of 13/08/2010, R 122/2010-2, GOOGLE WAVE; 16/06/2016, R 2077/2015-5, ATOM I).
- Article 92(2) EUTMR lays down that ‘natural or legal persons not having either their domicile or their principal place of business or a real and effective industrial or commercial establishment in the European Union must be represented before the Office … in all proceedings, other than in filing an application for a European Union trade mark’.
- The examiner appears to have considered that the appointment of a representative was some ‘other formal requirement governing applications laid down in the [EUTMR] or [CTMIR]’ … which had ‘not [been] complied with’ and for which the Office had ‘invite[d] the applicant to remedy’ within the period specified under Rule 9(3)(a) CTMIR. Under Rule 9(4) CTMIR, the penalty for not remedying Rule 9(3)(a) deficiencies within the deadline is rejection of the European Union trade mark application and that is precisely what happened as a result of the contested decision.
- The examiner’s action is unduly harsh given that the obligation to appoint a representative does not apply to the filing of a European Union trade mark application and therefore such appointment could reasonably be argued not to be a ‘formal requirement governing applications’ in the sense of Rule 9(3)(a) CTMIR. Even if that is an overly restrictive interpretation of the relevant legislative provisions, the fact remains that the Boards have consistently held that the failure to appoint a representative by an applicant not having either their domicile or their principal place of business or a real and effective industrial or commercial establishment in the European Union, although technically constituting a ground for refusal, is one that can be overcome at the appeal stage (01/04/2008, R 83/2008-2, JAZZ BASS, § 12; 23/10/2006, R 521/2006-4, GREEN PLUS).
- The aim of Article 92(2) EUTMR is to ensure that proceedings before the Office are conducted with a representative based in the European Union to facilitate notifications and hence respect of time-limits, as well as the observance of the rights of defence (10/01/2017, R 1452/2016-1, MOBI-AIR (fig.), § 26).
- The proceedings regarding the appointment of a representative are primarily a matter between the party that is required to appoint the representative and the Office. It is not an adversarial procedure and no third party rights are affected. Accordingly, to reject a European Union trade mark application on the basis of failure to appoint a representative in the given time-limit would be disproportionate. On the other hand, allowing that deficiency to be cured on appeal (in accordance with previous decisions of the Boards), would not prejudice the rights of third parties and the legislative aim of conducting the proceedings with a representative based in the European Union would have been complied with in the present case.
- The applicant in this case remedied the deficiency by informing the Office on 4 August 2016, of the appointment of the new representative, which the Office recorded on 6 August 2016.
- Having regard to all the foregoing, the Board considers that the contested decision cannot be upheld as regards the failure to appoint a representative. The Board therefore sets the contested decision aside.
On those grounds,
- Annuls the contested decision;
- Remits the case to the examiner to continue proceedings.
Th. M. Margellos
10/01/2017, R 1452/2016-1, MOBI-AIR (fig.)