DECISION

of the First Board of Appeal

of 7 July 2016

In Case R 1506/2015-1

István Szőcs
Budapest Edvi Illés u. 35 HU-1121 Hungary	Claimant / Appellant

represented by József Sándor, Németvölgyi út 73/B, HU-1124, Budapest, Hungary

APPEAL relating to transfer of ownership under Recordal No 9 556 815 of European Union trade mark No 12 771 515

The First Board of Appeal

composed of Th. M. Margellos (Chairperson), C. Rusconi (Rapporteur) and Ph. von Kapff (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. On 15 August 2014, István Szőcs (hereinafter ‘the claimant’) was granted EUTM No. 12 771 515.

2. By letter dated 7 May 2015, Danubia Patent & Law Office LLC (hereinafter, ‘Danubia’) applied to record the transfer of the EUTM to Regional Energy & Environment Est., of Ryadh, Saudi Arabia (hereinafter, ‘the Saudi company’), on the basis of a transfer agreement (hereinafter ‘the agreement’).

3. On 27 May 2015, the Operations Department notified Danubia and the claimant that the transfer of ownership had been entered in the register under No. T 9 556 815.

4. On 24 July 2015, the claimant submitted a notice of appeal against the decision to record the transfer (‘the contested decision’).

5. On 29 July 2015, the Registry of the Boards of Appeal acknowledged receipt of the notice of appeal and reminded the claimant that a written statement of grounds should be filed within a time-limit of four months counted from the notification of the “contested decision”.

6. On 6 October 2015, the Registry informed the claimant that he did not file a statement of grounds and that the appeal might thus be inadmissible.

7. On 6 November 2015, the claimant submitted a request for restitutio in integrum and the grounds of appeal. In support of restitutio in integrum, the claimant states that he could not submit within the time-limit (27 September 2015) the grounds of appeal because their content depended on those of an application filed (on 2 October 2015) with the Budapest Court in order to declare the invalidity of the agreement. The claimant argues that restitutio in integrum is timely because it was made within one year of the expiry of the unobserved time-limit and within two months of the removal of the cause of non-observance, i.e. the application before the Court. In the statement of grounds, the claimant asks that the Board annul the “decision” on the grounds that the agreement did not establish the transfer and no consent was given to record the Saudi company as the new proprietor. Alternatively, the claimant requests that the Board suspend the proceedings until the Budapest Court decides on the validity of the agreement.

Reasons

8. The appeal shall be dismissed as inadmissible pursuant to Rule 49(1) CTMIR because the statement of grounds has been submitted out of time. The request for restitutio in integrum is manifestly unfounded. The reasons are explained hereinafter.

On the date of expiry of the time-limit to submit the statement of grounds of appeal

9. Pursuant to Article 60 EUTMR, the statement containing the grounds of appeal must be filed at the Office “within four months after the date of notification of the decision [being appealed]”.

10. The decision (to record, in the Office’s Register, the transfer of the EUTM to the Saudi Company) was notified by fax to the claimant on 27 May 2015. The claimant does not contest this.

11. It follows from Rule 70(2) CTMIR that the time-limit for submitting the grounds of appeal commenced to run on 28 May 2015 and, in accordance with Rule 70(4) CTMIR, expired four months later, namely on 28 September 2015. The claimant does not substantially contest this, either.

12. It is also not contested that no statement of grounds were filed within that time–limit. The claimant admits that these were only filed on 6 November 2015.

13. It follows from the above that, as acknowledged by the claimant, the statement of grounds was indeed filed out of time with the result that the appeal is, in principle, inadmissible.

14. Since, however, the claimant has requested that the appeal be reinstated within the missed time-limit within the meaning of Article 81 EUTMR, the decision whether the appeal is indeed inadmissible depends on whether that reinstatement is permitted or not.

On the request of Restitutio in integrum

15. The claimant relies on Article 81 EUTMR which states, at paragraph 1, that a 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, shall, upon application, have his rights re-established if the obstacle to compliance has the direct consequence (…) of causing the loss of any right”.

16. The claimant argues that the “due care” required from him, that he first sue the Saudi company (for the annulment of the transfer document) because the content of the grounds of appeal depended on the contents of the judicial application and the drafting of that judicial application by lawyers, has been a time-consuming process. The claimant contends, as a result, that the filing of this judicial application was the obstacle that prevented him from filing the grounds of appeal in due time.

17. In the Board’s opinion, this line of reasoning is not convincing.

18. It should be noted that the claimant does not argue that there were reasons of law that subordinated the filing of the statement of grounds of appeal to the filing of the Hungarian lawsuit. In fact, there is no such subordination according to the EUTMR and the CTMIR.

19. The reasons given are more factual in character, namely that the contents of the statement of grounds depended on the judicial pleadings that the claimant’s lawyers had to draft and submit (at the Hungarian court), which turned out to be a lengthy process.

20. The Board does not find this causal relationship convincing. The claimant, being the party directly affected by the contested decision, should have been aware since the date of notification of that decision of the reasons for which, in his view, he had been unjustly deprived of the ownership of the EUTM. In other words, these reasons did not become known to him only when the judicial application was drafted and filed. These reasons have been known to him since the date of notification of the decision or, at least, since the date of the appeal. The Board notes, in this regard, that the claimant does not argue that he became aware of these reasons only after the time-limit at issue expired.

21. It follows from the file and the arguments that the claimant duly had the information required in order to submit the grounds of appeal in good time because he knew (i) the reasons that could convincingly support its appeal and (ii) the time-limit.

22. In the Board’s opinion, in order to successfully argue that he had taken “all due care required by the circumstances”, the claimant should have used that information in order to compile and submit the grounds of appeal within the time-limit.

23. It necessarily follows from the above that the filing of the Hungarian lawsuit was not an “obstacle”, either in law or in fact, to the timely submission of the grounds of appeal.

24. Since the request for restitutio in integrum is not well founded and the grounds of appeal were received out of time, the appeal must be dismissed as inadmissible.

25. The present decision is rendered without prejudice of the claimant’s right to be recorded in the EUIPO Register as owner of the EUTM as a result of a judgment (Article 17 EUTMR and Rule 31 CTMIR).

Order

On those grounds,

THE BOARD

hereby:

Dismisses the appeal as inadmissible.

Signed Th. M. Margellos

Signed C. Rusconi

Signed Ph. von Kapff

Registrar: Signed H. Dijkema