OPPOSITION No B 3 015 289

Sidónios Malhas, S.A., Lugar de Quiraz - Roriz, 4754-909, Barcelos, Portugal (opponent), represented by Ilidia Mendes, Av. D. Nuno Alvares Pereira, 25, 1- 101, 4750-324, Barcelos, Portugal (professional representative)

a g a i n s t

Catherine Sidonio, Villa Les Acacias Avenue Thierry, 83500 Tamaris La Seyne Sur Mer, France (applicant), represented by Kilburn & Strode LLP, Laapersveld 75, 1213 VB Hilversum, Netherlands (professional representative).

On 18/11/2020, the Opposition Division takes the following

DECISION:

1. The request for restitutio in integrum is rejected.

2. The Opposition No B 3 015 289 is rejected in its entirety.

3. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 911 117 in Classes 18 and 25. The opposition is based on European Union trade mark registration No 1 975 333 for the figurative mark . The opponent invoked Article 8(1)(a) and (b) EUTMR.

RESTITUTIO IN INTEGRUM

According to Article 104 EUTMR parties to proceedings before the Office may have their rights reinstated (restitutio in integrum) if they were unable to meet a time limit vis-à-vis the Office despite taking all due care required by the circumstances, provided that the failure to meet the time limit had the direct consequence, by virtue of the provisions of the Regulations, of causing a loss of rights or loss of means of redress (28/06/2012, T‑314/10, Cook’s, EU:T:2012:329, § 16-17).

Observing time limits is a matter of public policy, and granting restitutio in integrum can undermine legal certainty. Consequently, the conditions for the application of restitutio in integrum have to be interpreted strictly (19/09/2012, T‑267/11, VR, EU:T:2012:446, § 35).

According to Article 104(2) EUTMR, the application must be filed in writing within two months of removal of the cause of non-compliance with the time limit. The omitted act must be completed within this period. The application is only admissible within the year immediately following the expiry of the unobserved time limit.

In the present case, on 18/06/2020, the Office invited the opponent to comment on the applicant’s observations by 28/08/2020.

The Office received the opponent’s observations on 11/09/2020. Therefore, they were not received within the time limit, in accordance with Article 8(2), (3) and (4) EUTMDR.

The relevant point in time that determines the acceptance of the documents is that of their receipt by the Office and not the date of their posting. Consequently, the Office should have received the opponent’s observations by 28/08/2020, which was the expiry date of the opponent’s time limit.

On 08/10/2020, the opponent filed a request for restitutio in integrum in relation to the abovementioned observations. The request is admissible, as it was filed within two months, and the respective fees for restitution were paid.

Criteria for granting restitutio in integrum

According to Article 104(1) EUTMR and case-law, there are two requirements for restitutio in integrum (25/04/2012, T‑326/11, BrainLAB, EU:T:2012:202, § 36):

a) that the party has exercised all due care required by the circumstances, and

b) that the non-observance (of a deadline) by the party has the direct consequence of causing the loss of a right or means of redress.

The condition of ‘all due care required by the circumstances’

Rights will be re-established only under exceptional circumstances that cannot be predicted from experience (13/05/2009, T‑136/08, Aurelia, EU:T:2009:155, § 26) and are therefore unforeseeable and involuntary.

In this case, in its application for restitutio in integrum on 08/10/2020, the opponent argued the following.

 Due to the spread of COVID-19, worldwide communication services were affected, including postal services.

 Although post offices applied the protocols, and contingency plans were established by health authorities to minimise the COVID-19 impact on mail distribution services, they suffered delays.

 The usual delivery time of Portugal’s postal service in Europe for registered post/mail is about three working days, as shown in document 2 (not translated into the language of the proceedings).

 The opponent’s observations were sent to the Office on 26/08/2020 by the Portuguese postal service, as shown in document 3.

 The opponent exercised all due care by taking into consideration the delivery times indicated on the Portuguese post office’s website.

 The exceptional circumstances did not allow the opponent to predict the correct time of the delivery. Therefore, the opponent should not be penalised.

The Opposition Division has taken the abovementioned arguments into consideration. However, the request for restitutio in integrum is not well founded.

First of all, the Opposition Division notes that in opposition proceedings it is up to the party to decide the means of communication with the Office. When sending communications, the party or its representative must take certain measures, for the purposes of due care, to ensure that its request arrives at the Office.

In principle, the failure to deliver by the postal or delivery service does not involve any lack of due care by the party concerned (25/06/2012, R 1928/2011‑4, SUN PARK HOLIDAYS / SUNPARKS). However, it is up to the party’s representative at least to find out in advance from the delivery company what the usual delivery times are (e.g. in the case of letters sent from Germany to Spain in 04/05/2011, R 2138/2010‑1, YELLOWLINE / Yello).

Furthermore, a trade mark attorney or professional representative has to manage their office in a way that ensures that, in the normal course of business and according to their instructions, time limits are not missed. To avoid mistakes, they have to do everything possible within what is considered normal under the circumstances. In this particular case, they should have confirmed that the delivery of mail by the Portuguese post office would still take place within three working days, given the exceptional circumstances created by COVID-19. Clearly, it could have been expected that COVID-19 would have a negative effect on the normal delivery process of this post office.

Therefore, the circumstances cited by the opponent cannot be regarded as exceptional within the meaning of the abovementioned provisions. The opponent has not proved that all due care required by the circumstances was taken when submitting the observations on 26/08/2020. Therefore, the request for restitutio in integrum is not well founded.

The time limit for the opponent to submit comments on the applicant’s observations remains 28/08/2020. Consequently, the facts and arguments in support of the opposition submitted by the opponent on 25/08/2020 (consisting of 15 invoices) and received by the Office on 11/09/2020 cannot be taken into consideration.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, the European Union trade mark No 1 975 333.

The date of filing of the contested application is 22/06/2017. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 22/06/2012 to 21/06/2017 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, after cancellation proceedings No 20 222 C, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 23: Threads and fibres not included in other classes.

Class 24: Textiles, included to the bed and to the table.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 13/02/2018, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 15/05/2018 to submit evidence of use of the earlier trade mark. On 11/05/2018, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

 Items 1.1. to 1.5: five certificates of compliance of the company ‘Sidonios Malhas S.A.’ with translations, dated between 2015 and 2018. These certificates state that the products (knitted fabrics) of the company ‘Sidonios Malhas S.A.’ comply with the Global Organic Textile Standard or Standard 100 by OEKO-Tex. The mark appears as a company name displayed as follows: .

 Items 2.1 and 2.3: three applications to the European regional development fund (NORTE 2020) requesting financial support for different projects dated between 2016 and 2017 (except item 2.1, which is undated). In these documents, the mark appears used as a company name. Item 2.1 states that the company ‘Sidonio Seamless Tech SA’ is located in Barcelos, having been created in 2002 as a result of the company ‘Sidonios Malhas’. Item 2.3 refers to the company ‘Sidonios Intimo’. Furthermore, it states that ‘the main objective of the projects is to strengthen the competitiveness of this company in the textile sector’. The company ‘Sidonios’ will promote its own brands ‘OUTFLOW’ and ‘SEAMLESS TECH’.

 Items 3.1 to 3.2: two extracts from the opponent’s catalogues dated in 2018. They do not refer to the relevant goods, but to running shoes and trekking/backpacking goods.

 Item 3.3: an undated brochure from the opponent showing a building displaying the earlier mark on the cover, and explaining the company’s activities and its corporate philosophy.

 Item 3.4: an undated extract of a catalogue ‘Promosty’, showing clothes for kids and referring to ‘Sidonios Knitwear’. It does not contain any references to the use of the mark in relation to the goods on which the opposition is based.

 Items 4.1 to 4.20: different press articles dated between 2004 and 2018, mainly in Portuguese with an English translation. In all the articles, the mark appears used only as the company name. Furthermore, some of the press articles are not current (items 4.1 to 4.7).

 Item 4.1: refers to the product ‘fetal panty’ for women, developed in partnership with the company ‘Sidonios’.

 Item 4.2: refers to the 6th edition of the fair Textiles of the Future and an innovative product, seamless knit, developed in partnership with ‘Sidonios knits’.

 Item 4.3: covers an interview with the manager of the company ‘Sidonios Intimo’. He refers to ‘Sidonios’ as a company, saying ‘Sidonios Intimo grow 20 % in relation to 2003’ or ‘we are already an international company’.

 Item 4.4: mentions ‘Sidonios Malhas’ among the 17 Portuguese national companies. Furthermore, the press article refers to the group ‘Sidonios Malhas’.

 Item 4.5: refers to the company ‘Sidonios’ as a representative of the most inventive textiles (functional knits) within Portuguese companies.

 Item 4.6: refers to highly technical and functional knits made by the company ‘Sidonios Filhos’.

 Item 4.7: refers to the brand ‘Fetal Panty’ for pregnant woman, which is the result of, inter alia, a partnership with the company ‘Sidonios’.

 Item 4.8: refers to the company ‘Sidonion Intimo’ as the best transactional goods export company.

 Item 4.9: refers to four IPSO awards won by the company ‘Sidonios’. The article refers to the ‘Sidonios group’ as composed of the companies ‘Sidonios Malhas’ and ‘Sidonios Seamless Tech’.

 Item 4.10: a declaration by John Gomes for the company ‘Sidonios Knitwear’, stating that the company offers knits made from mixes of shiny fibres, such as rayon or cupro and velour, which reflect light in different ways.

 Item 4.11: the article ‘TOP EXPORTA’ mentioning different companies, including the companies ‘Sidonios Malhas S.A.’ and ‘Sidonios Seamless Tech S.A.’.

 Item 4.12: relates to a fair in New York showing the trends of seven Portuguese companies, such as ‘Sidonios Malhas’.

 Item 4.13: relates to the Munich Fabric trade fair and mentions that Portugal will be represented by the companies ‘Sidonios Malhas’ and ‘Texser’.

 Item 4.14: refers to Portuguese companies that demonstrate great drive in the Portugal textile field, such as ‘Sidonios Seamless’.

 Item 4.15: mentions that the company ‘Sidonios’ received four distinctions and won an innovation prize in 2014.

 Item 4.16: mentions that the company ‘Sidonios’ is one of the participants in ISPO Munich 2017.

 Item 4.17: in which Bruno Sidonios, director of the Sidonios Seamless factory in Barcelos, refers to seamless clothing that has more complex pieces intended for various sports.

 Item 4.18: indicates that ‘Siodonios Seamless’ is among the 32 companies present at ISPO Munich fair.

 Item 4.19: mentions that ISPO is the largest forum of sports clothing and articles. The company ‘Sidonios Seamless Tech SA’ has an individual stand at ISPO Munich 2018.

 Item 4.20: mentions that ISPO attracts almost 50 Portuguese companies, such as the company ‘Sidonios Seamless SIT’.

 Items 5.1 to 5.8: undated pictures referring to ‘Sidonios Knitwear’ or ‘Sidonios Seamless Technology’. Some of these pictures show sports clothes or socks. A picture dated 2017, taken from a social network, shows a T-shirt bearing the mark ‘Sidonios Seamless Tech’. These pictures do not contain any references to the use of the earlier mark in relation to the goods on which the opposition is based.

 Item 6.1: three emails, one dated in 2018 and two in 2013, related to the fact that the famous actress Sofia Vergara appeared on a TV show in one of the opponent’s dresses.

 Item 6.2: an email dated 2015 and sent to the opponent by a company offering to collaborate in promoting the opponent’s products. The mark appears used as a company name. It does not contain any references to the use of the earlier mark in relation to the goods on which the opposition is based.

 Item 6.3: an undated email of ‘Performance days, functional fabric fair’ related to the fair in Munich held in 2018. The earlier mark does not appear.

ASSESSMENT OF GENUINE USE

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

‘The purpose of a company, trade or shop name is not, of itself, to distinguish goods or services … The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a business which is being carried on. Accordingly, where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being carried on, such use cannot be considered ‘in relation to goods or services’ within the meaning of Article 5(1) of the directive’, i.e. it cannot be considered to be used as a trade mark (11/09/2007, C‑17/06, Céline, EU:C:2007:497; 13/05/2009, T‑183/08, Jello Schuhpark II, EU:T:2009:156).

Use of a business, company or trade name can be regarded as use ‘in relation to goods’ where:

 a party affixes the sign constituting its company name, trade name or shop name to the goods or,

 even though the sign is not affixed, the party uses the sign in such a way that a link is established between the company, trade or shop name and the goods or services (11/09/2007, C‑17/06, Céline, EU:C:2007:497, § 21-23).

In the present case, none of the above conditions has been met. Most of the evidence (items 1.1 to 1.5, items 2.1 to 2.3 and items 4.1 to 4.20) clearly refer to ‘Sidonios’ only as a company name specialised in knitted fabrics or knitwear. Furthermore, the content of the press articles stating, for example, that the company ‘Sidonion’ had won different awards and that it was the best transactional goods export company supports the finding that no link could be established between the company name in question and the goods in Classes 23 and 24 for which the mark is registered. Therefore, the earlier mark has not been used with the purpose of identifying the relevant goods in the market.

The remaining evidence is irrelevant because it does not show the earlier mark and it is undated or not current, or it does not refer to the goods concerned.

Therefore, the Opposition Division concludes that the evidence does not show use of the opponent’s mark as a trade mark for the goods that it covers. Consequently, the opponent has not provided sufficient indications concerning the nature of use of the earlier mark.

Belated evidence

On 25/08/2020, the opponent submitted additional evidence. However, the Office received the evidence on 11/09/2020 after the expiry of the time limit (28/08/2020). This evidence relates to 15 invoices (Annexes 1 to 15) displaying the following sign and dated within the relevant period. These invoices display different types of clothes as products.

Pursuant to Article 10(7) EUTMDR the Office must exercise its discretion under Article 95(2) EUTMR and decide whether or not to accept belated indications or evidence of use. However, the use of the term ‘supplementary’ in the text of Article 10(7) EUTMDR points to the necessary existence of a previous relevant submission within the time limit set by the Office; that is, that it is not entirely new. It follows that no discretionary power is available if no indications or evidence of use were submitted within the relevant time limit, or if the indications or evidence submitted are manifestly irrelevant or insufficient.

The evidence submitted by the opponent within the set time limit has been considered manifestly insufficient to meet the requirement of the nature of use. In addition, the evidence submitted on 11/09/2020 refers to goods that do not correspond to those covered by the earlier mark. As a result, as it is not complementary with respect to the insufficient indications given by the initial evidence, it cannot be taken into account.

Conclusion

The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used for the relevant goods in the relevant territory during the relevant period of time.

Therefore, the opposition must be rejected pursuant to Article 47(2) and (3) EUTMR and Article 10(2) EUTMDR.

COSTS

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

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

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Aldo BLASI

Birgit FILTENBORG

Francesca CANGERI

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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.