CANCELLATION No 12701 C (REVOCATION)

Fédération Internationale de l’Automobile, 2 Chemin de Blandonnet, 1214 Vernier, Switzerland (applicant), represented by Noerr Alicante IP, Avenida México, 03008 Alicante, Spain (professional representative)

a g a i n s t

The Green Effort Limited, 145-157 St. John Street, London EC1 4PW, United Kingdom (EUTM proprietor), represented by Primus Omnium Consultant & Management Company Limited, 145-157 St. John Street, London EC1V 4PW, United Kingdom (professional representative).

On 04/08/2021, the Cancellation Division takes the following

DECISION

1. The EUTM proprietor’s request for restitutio in integrum is rejected.

2. The application for revocation is upheld.

3. The EUTM proprietor’s rights in respect of European Union trade mark No 9 528 001 are revoked in their entirety as from 15/03/2016.

4. The EUTM proprietor bears the costs, fixed at EUR 1 150.

REASONS

The applicant filed a request for revocation of European Union trade mark No 9 528 001 ‘Formula E’ (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 25: Clothing.

Class 38: Broadcasting by radio, television and satellite.

Class 41: Organization of sporting events.

The applicant invoked Article 51(1)(a) EUTMR.

RESTITUTIO IN INTEGRUM

The applicant has filed an application for revocation of the contested EUTM on 15/03/2016. On 21/03/2016, the Office has notified the application for revocation to the EUTM proprietor who had until 21/06/2016 to submit proof of genuine use of the contested EUTM.

The EUTM proprietor has submitted observations on 22/06/2016. On 23/06/2016, the Office has informed both parties that the submission of the EUTM proprietor will not be taken into account because they were not received within the time limit.

On 06/07/2016, the Office has notified both parties on the closure of the adversarial part of the proceeding because the EUTM proprietor did not submit proof of genuine use of the contested trade mark within the time limit.

On the 27/07/2016, the EUTM proprietor has filed a request for restitutio in integrum in relation with the time limit for the submission of proof of genuine use, asking the Office to take into account the documents submitted on 22/06/2016.

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 shall, 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 shall 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 shall not be deemed to be filed until the fee for re-establishment of rights has been paid.

a) On the payment of the fee of the request 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 request for restitutio in integrum was filed on 27/07/2016, the payment of the fee has been received on 22/07/2016. Therefore, the request is deemed to have been filed on 27/07/2016.

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 EUTM proprietor’s time limit to submit proof of genuine use, which ended on 21/06/2016.

In the present case, the cause of non-compliance has to be considered as removed on 22/06/2016, when the EUTM proprietor has submitted the evidence of genuine use. Consequently, the two-month time limit to file a request for restitutio in integrum expires on 22/08/2016.

On 27/07/2016, the EUTM proprietor 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 proof of genuine use of the contested EUTM has been completed within the two-month period.

Consequently, the request for restitutio in integrum has to be considered admissible taking further into account that the application does not refer to a time limit excluded from restitutio in integrum pursuant to Article 81(5) EUTMR.

Consequently, the application for restitutio in integrum is admissible.

c) On the substance of the request for restitutio in integrum

Under the terms of Article 81(1) EUTMR, for a request for restitutio in integrum to be granted, the following requirements must be met:

1. the person requesting the restitutio in integrum has been unable to comply with a time limit vis-à-vis the Office;

2. 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

3. 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 EUTM proprietor was given until 21/06/2016 to submit proof of genuine use of the contested EUTM. Observations from the EUTM proprietor have been submitted to the Office on 22/06/2016, so after the expiry of the time limit.

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 EUTM proprietor has lost the right to prove that its EUTM is used, which means that its EUTM should be revoked and deemed to not had any effect from the date of the application for revocation.

iii. Due care

In order for the restitutio to be granted, the party must have taken all due care required by the circumstances to observe the time limit.

Restitutio implies a duty of diligence for the parties, which extends to the duly authorized professional representatives. The standard of due care required of a representative to avoid the loss of rights due to a missed deadline will generally be higher than for a party to the proceedings before the Office. The representative must maintain a system of internal control and monitoring of 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 (13/05/2009, T-136/08, Aurelia, EU:T:2009:155, §26).

Therefore, the Cancellation Division has to ascertain whether the EUTM proprietor’s representative took “all due care required by the circumstances” in order to avoid a loss of rights.

In its request for restitutio in integrum, the EUTM proprietor’s representative explains that it has tried to send documents by electronic communication and by facsimile to the Office on 21/06/2016. According to the observations, the EUTM proprietor’s representative tried to send a facsimile to the Office on 21/06/2016 from 22:41:48 hours, fax reports are joined to the request. As the representative is located in the United Kingdom, the Cancellation Division assumes that, considering the difference between the time zones, the first facsimile was sent at 23:41:48 hours at Alicante time (CEST).

A facsimile reached the Office on 21/06/2016 at 23:06:41 hours (London time). Taking into account the time difference, this facsimile has been received by the Office on 22/06/2016 at 00:06:41, Alicante time, which is after the expiry of the time limit.

On 21/03/2016, the EUTM proprietor was given three months to submit proof of genuine and/or observations in reply to the application for revocation. Therefore, the EUTM proprietor and its representative were granted sufficient time to reply to the notification of an application for revocation.

On 21/06/2016, the Office did not have any technical problem concerning the receipt of communications by facsimile or electronic communication. The EUTM proprietor’s representative has tried to reach the Office on 21/06/2016 from 23:41:48 hours (Alicante time), so less than nineteen minutes before the expiry of the time limit.

As regards the electronic communication, the EUTM proprietor’s representative explains that the last successful login was done on 21/06/2016 at 23:51:53 hours CEST. The representative of the EUTM proprietor did not submit any proof that it has tried to send an electronic communication to the Office and that this submission has failed.

The communication systems of the Office were working properly and no general problem or failure of those systems has been reported to the Office.

Therefore, the Cancellation Division assumes that the failure of communications from the representative of the EUTM proprietor is not an unpredictable and exceptional event, especially for a professional representative.

The EUTM proprietor’s representative claims that the Office could not be reached by telephone after 20:00 hours. All the opening hours of the Office are indicated on the Office’s website including the opening hours of the ‘E-business support line’. Therefore, the representative of the EUTM proprietor should have been aware that the Office support lines are closed after 19:30 hours.

Having examined the request and explanations by the EUTM proprietor’s representative, the Cancellation 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 comply with the deadline.

d) Conclusion

Taking into account the evidence and explanations given by the EUTM proprietor’s representative, the Cancellation Division concludes that the EUTM proprietor’s representative did not show that there were exceptional circumstances and that it had taken all due care in order to avoid a loss of right. Therefore, the Cancellation Division rejects the request for restitutio in integrum and will not take into account the submissions of 22/06/2016.

The purpose of Article 81 CTMR is to provide applicants and EUTM proprietors with the possibility to remedy an omission due to exceptional and unforeseeable circumstances but not to remedy simple negligence or errors on the part of the EUTM proprietor or its representative. This is an exceptional institution and the conditions for its application have to be construed strictly.

GROUNDS FOR THE DECISION

According to Article 51(1)(a) EUTMR, the rights of the proprietor of the European Union trade mark will be revoked on application to the Office, if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union for the goods or services for which it is registered, and there are no proper reasons for non-use.

In revocation proceedings based on the grounds of non-use, the burden of proof lies with the EUTM proprietor as the applicant cannot be expected to prove a negative fact, namely that the mark has not been used during a continuous period of five years. Therefore, it is the EUTM proprietor who must prove genuine use within the European Union or submit proper reasons for non‑use.

In the present case the EUTM was registered on 14/03/2011. The revocation request was filed on 15/03/2016. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request.

On 21/03/2016, the Cancellation Division duly notified the EUTM proprietor of the application for revocation and gave it a time limit of three months to submit evidence of use of the EUTM for all the goods and services for which it is registered.

The EUTM proprietor did not submit any observations or evidence of use in reply to the application for revocation within the time limit.

According to Rule 40(5) EUTMIR, if the proprietor of the European Union trade mark does not provide proof of genuine use of the contested mark within the time limit set by the Office, the European Union trade mark will be revoked.

In the absence of any reply from the EUTM proprietor, there is neither any evidence that the EUTM has been genuinely used in the European Union for any of the goods and services for which it is registered nor any indications of proper reasons for non-use.

Pursuant to Article 55(1) EUTMR, the EUTM must be deemed not to have had, as from the date of the application for revocation, the effects specified in the EUTMR, to the extent that the proprietor’s rights have been revoked.

Consequently, the EUTM proprietor’s rights must be revoked in their entirety and deemed not to have had any effects as from 15/03/2016.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

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

According to Rule 94(3) and (6) EUTMIR and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Natascha GALPERIN

Arkadiusz GORNY

Reiner SARAPOGLU

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 Cancellation 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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.