CANCELLATION No 41 971 C (REVOCATION)

Killara I.P. Pty Ltd, 11 Scoresby Road, Bayswater, Victoria 3153, Australia (applicant)

a g a i n s t

Smiths Medical Asd, Inc., 6000 Nathan Lane North, Plymouth, Minnesota MN55442, United States of America (EUTM proprietor), represented by Jonathan Flint, Smiths Medical, 21 Lammas Park Road, Ealing, London W5 5JD, United Kingdom (professional representative).

On 29/06/2021, the Cancellation Division takes the following

DECISION

1. The application for revocation is rejected as inadmissible.

2. The fee for the application for revocation will not be refunded.

REASONS

The applicant filed a request for revocation of European Union trade mark No 8 416 414 'SNUGAROO' (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:

Class 10:

Patient warming devices; heated blankets for medical use; warm air blowers for medical use; and parts and fittings for all the aforesaid goods.

The applicant invoked Article 58(1)(a) EUTMR.

GROUNDS FOR THE DECISION

According to Article 119(2) EUTMR, 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 EEA must be represented before the Office in accordance with Article 120(1) EUTMR in all proceedings established by this Regulation, other than in filing an application for a European Union trade mark.

Pursuant to Article 119(3) EUTMR, natural or legal persons having their domicile or principal place of business or a real and effective industrial or commercial establishment in the European Economic Area may be represented before the Office by an employee. An employee of a legal person to which this paragraph applies may also represent other legal persons which have economic connections with the first legal person, even if those other legal persons have neither their domicile nor their principal place of business nor a real and effective industrial or commercial establishment within the European Economic Area (…).

Where a party to proceedings before the Office has failed to appoint a representative within the meaning of Article 120(1) EUTMR in its application or request, or where compliance with the representation requirement ceases to exist at a later stage, the legal consequences will depend on the procedural position of the party and the nature of the proceedings concerned.

In cancellation proceedings where representation is mandatory pursuant to Article 119(2) EUTMR, if the cancellation application does not contain the appointment of a representative, the Office will find a relative admissibility deficiency, which the applicant will be invited to remedy (Article 12(1)(c)(ii) and Article 15(4) EUTMDR).

On 09/10/2020, the applicant finally remedied the deficiency raised by the Office on the nature of the economic connection existing between the representative and the applicant. Consequently, on 13/10/2020 the application for revocation received by the Office on 06/03/2020 was considered admissible under Article 14 and Article 17(1) EUTMDR.

On 01/02/2020, the United Kingdom (UK) withdrew from the European Union (EU) subject to a transition period until 31/12/2020. According to Communication No 2/20 of the Executive Director of the Office of 10/09/2020 on the impact of the United Kingdom’s withdrawal from the European Union on certain aspects of the practice of the Office, particularly relevant for UK-based representatives. In particular, according to point 17 of said Communication, as of 01/01/2021, natural or legal persons having their domicile or principal place of business or a real and effective industrial or commercial establishment in the UK or in another country outside the EEA will have to be represented in all proceedings before the Office, other than the filing of an application for an EUTM or an RCD.

Since the representative appointed was not valid since 01/01/2021, on 07/04/2021 the Office invited the applicant to remedy this relative deficiency until 12/06/2021.

The applicant did not appoint a new representative within the given time limit.

Therefore, the application must be rejected as inadmissible.

REVOCATION FEE

The fee for the application for revocation is due for filing the application, regardless of the outcome of the proceedings. Therefore, in cases of inadmissibility, it is not refunded to the applicant. The only provision that allows for the refund of the cancellation fee is Article 15(1) EUTMDR, applicable only where the application is deemed, as a result of late payment, not to have been filed.

Therefore, in the present case, the fee for the application for revocation will not be refunded.

The Cancellation Division

Carmen SÁNCHEZ PALOMARES

Ana MUÑIZ RODRÍGUEZ

Richard BIANCHI

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 submitted in writing at the Office within two months of the date of notification of this decision. It must be submitted 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 submitted 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.