CANCELLATION No 12 586 C (INVALIDITY)

Style & Taste, S.L., Avda de Menendez Pelayo Nº 36, bajo centro, 28007 Madrid, Spain (applicant), represented by Plaza y Cía, Calle Orense, 64 1ºD, 28020 Madrid, Spain (professional representative)

a g a i n s t

The Polo/Lauren Company L.P., 650 Madison Avenue, 10022 New York, New York, United States of America (EUTM proprietor), represented by Baker & McKenzie, Calle de José Ortega y Gasset, 29, 28006 Madrid, Spain (professional representative).

On 10/05/2018, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

Preliminary remark

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 4 049 201 in Classes 9, 18, 20, 21, 24 and 25. The application is based on Spanish industrial design right No D0024087 . The applicant invoked Article 60(2)(d) EUTMR.

SUBSTANTIATION OF THE EARLIER RIGHT

The initial application for invalidity suffered several relative admissibility deficiencies. The Office invited the applicant to remedy them. The applicant eventually remedied the deficiencies and the application has been found admissible. However, in all the letters of the Office dealing with the deficiencies – letter dated 17/03/2016, letter dated 20/06/2016 and letter dated 18/08/2016 it is clearly stated that ‘the documents and/or translations that you may have submitted so far with a view to completing the admissibility of the application may not be sufficient for the substantiation of the application for invalidity (proof of the existence and validity of the earlier right/s) as a whole. This will be examined when a decision on the substance of the case is taken.’

According to 38(2) of Regulation (EC) No 2868/95 (applicable to the issue of substantiation in the current case), where the evidence in support of the application is not filed in the language of the revocation or invalidity proceedings, the applicant must file, on its own motion, a translation into that language within two months of the filing date of the evidence in support of the application. This applies to all the evidence submitted by the applicant in the course of the proceedings, whether it is filed together with the application or at a later stage. The Office does not send a deficiency letter, and it is up to the applicant to submit the translation of the evidence in support of the application of its own motion. The applicant did not send a translation of the registration certificate for the earlier right on which the invalidity request is based.

Any document in support of the application that is not translated by the applicant into the language of proceedings within the time limit specified in Rule 38(2) of Regulation (EC) No 2868/95 (applicable to the issue of substantiation in the current case) will be deemed not to have been received by the Office, and, therefore, will not be taken into account - Rule 98(2) of Regulation (EC) No 2868/95 (See also decision of 05/03/2012, R 826/2010-4, MANUFACTURE PRIM 1949 (fig.), § 25).

Therefore, by not submitting the translation of the registration certificate for the earlier Spanish industrial design right No D0024087 the applicant did not prove the validity and scope of protection of this earlier right. The application for invalidity is to be rejected as unfounded on this ground alone.

It is to be added, that when the application for invalidity is based on Article 60(2)(d) EUTMR the invalidity applicant has to provide the necessary national legislation in force and put forward a cogent line of argument as to why it would succeed under the specific national law in preventing the use of the contested mark. A mere reference to the national law will not be considered sufficient: it is not for the Office to make that argument on the applicant’s behalf (see, by analogy, judgment of 05/07/2011, C-263/09 P, ‘Elio Fiorucci’).Fiorucci, EU:C:2011:452).

The applicant did not submit the necessary national legislation in force and did not put forward a cogent line of arguments as to why it would succeed under the specific national law in preventing the use of the contested mark. This is another, separate ground for rejecting the application for invalidity as unfounded.

All in all, the applicant failed to substantiate the application for invalidity. The application is, therefore, rejected as unfounded.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Irina SOTIROVA

Plamen IVANOV

Gregor SCHNEIDER

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 Cancellation Division on request. According to Article 109(8) EUTMR, such a request must be filed within one month of the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.