OPPOSITION No B 2 392 614

Fujitsu Technology Solutions Intellectual Property GmbH, Mies-van-der-Rohe-Str. 8, 80807 München, Germany (opponent), represented by Epping Hermann Fischer Patentanwaltsgesellschaft mbH, Schloßschmidstr. 5, 80639 München, Germany (professional representative)

a g a i n s t

Alibaba Group Holding Limited, Fourth Floor, One Capital Place, P.O. Box 847, George Town, Grand Cayman, the Cayman Islands (applicant), represented by Dechert LLP, 160 Queen Victoria Street, London EC4V 4QQ, United Kingdom (professional representative).

On 04/05/2017, the Opposition Division takes the following

DECISION:

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

2. Opposition No B 2 392 614 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 498 424, namely against some of the goods and services in Classes 9 and 42. The opposition is based on German trade mark registration No 903 263. The opponent invoked Article 8(1)(b) EUTMR.

SESAM	SESAME
Earlier trade mark	Contested sign

RESTITUTIO IN INTEGRUM

The opposition is based on German trade mark registration No 903 263. On 18/08/2014, the Opposition Division invited the opponent to substantiate the earlier right and submit further facts and evidence to support the opposition on or before 23/12/2014. This time limit was extended several times and finally expired on 23/12/2016.

However, the opponent did not submit any evidence concerning the substantiation of the earlier trade mark within this time limit.

On 19/01/2017, the Opposition Division informed the opponent that, as the earlier right claimed as the basis for the opposition had not been substantiated, the Office would rule on the opposition on the basis of the evidence before it.

On 16/03/2017, the opponent filed a request for restitutio in integrum in relation to the time limit for substantiation of the earlier right and asked the Office to take into consideration the documents sent together with this request, namely a copy of the trade mark certificate and an extract from the official database of the German Patent and Trade Mark Office. The request indicates that the evidence to substantiate the earlier right had not been sent because an employee forgot to attach the relevant documents to the trade mark application.

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

a) On the payment of the fee for the application 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 application for restitutio in integrum was received on 16/03/2017. In the same communication, the opponent authorised the Office to deduct the due fee from its current account with the Office. The application for restitutio in integrum is, therefore, deemed to have been filed on 16/03/2017.

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 opponent’s time limit to substantiate its opposition, which ended on 23/12/2016.

Taking the above into account, the cause of non-compliance has to be considered as removed in the present case on 19/01/2017, when the Office officially informed the opponent that it had failed to substantiate its earlier right within the deadline. Consequently, the two-month time limit to file a request for restitutio in integrum expired on 19/03/2017.

On 16/03/2017, the opponent 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 a copy of the registration certificate of the earlier right or extract from an official database in the language of the proceedings within the prescribed period) is deemed to have been completed within the two-month period beginning on 19/01/2017, as the relevant documents were received by the Office on 16/03/2017.

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

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

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

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

ii. 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

iii. 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 opponent was given until 23/12/2016 to substantiate its earlier rights and submit further material in support of its opposition. The opponent filed documents consisting of a copy of the trade mark certificate and an excerpt from the official database of the German Patent and Trade Mark Office only on 16/03/2017, that is after the expiry of the time limit.

It follows from the above that the opponent was not able to observe the time limit for substantiation set by the Office.

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 opponent has lost the right to substantiate its opposition. This loss of right is a direct consequence of the fact that the opponent did not submit the relevant documents substantiating the earlier German trade mark within the set deadline, which expired on 23/12/2016. In practice, this means that the opponent has lost the right to validly oppose the registration of the EUTM application, as its opposition will be considered unsubstantiated.

iii. Due care

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 their duly authorised 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 (13/05/20009, T‑136/08, Aurelia, EU:T:2009:155, § 26).

Therefore, the Opposition Division has to ascertain whether or not the opponent’s representative took ‘all due care required by the circumstances’ to avoid a loss of rights.

In its request for restitutio in integrum, the opponent’s representative explains that, when the opposition was filed on 13/08/2014, the extract from the official database of the German Patent and Trade Mark Office was not attached to the application due to a mistake on the part of one of its employees. The draft version of the application, which included the abovementioned extract from the German Patent and Trade Mark Office, was checked and approved by the undersigning attorney. However, the opposition was finally filed electronically by another employee without attaching the abovementioned extract. The employee responsible for the electronic filing, who had already worked for the opponent’s representative for many years, was fully trained in and specialised in trade mark matters and was continually trained and supervised. It was the first time that such a mistake had occurred.

Having examined the opponent’s request and explanations, the Opposition 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 substantiate the earlier trade mark within the deadline. Errors in the management of files caused by the representative’s employees or by the computerised system itself are foreseeable. Consequently, due care would require a system for monitoring and detecting any such errors (13/05/20009, T‑136/08, Aurelia, EU:T:2009:155, § 18). The opponent did not explain how work is organised within its firm to properly ensure that a loss of right, due to errors when sending documents and attachments, is generally excluded.

Likewise, it has not been proven that there were exceptional circumstances or unforeseeable events that were beyond the control of the opponent’s representative. Human errors are not considered exceptional circumstances, under which a restitutio in integrum can be granted.

In view of this, the Opposition Division considers that the opponent’s representative did not show all due care in ensuring the transmission of the registration certificate and/or the database extract within the set time limit. Likewise, it has not been proven that there were exceptional circumstances and unforeseeable events that were beyond the control of the opponent’s representative, since the latter should and could have put in place a system capable of detecting and correcting any foreseeable error in the performance of the tasks of the specialist firm’s staff and providing for the required action.

d) Conclusion

Taking into account the arguments of the opponent’s representative, the Opposition Division concludes that the opponent’s representative did not show that there were exceptional circumstances which were beyond its control and that it had taken ‘all due care’ required by the circumstances in order to avoid a loss of right. Therefore, the Opposition Division rejects the request for restitutio in integrum and will not take into account the trade mark certificate and database extract filed on 16/03/2017.

The purpose of Article 81 EUTMR is to provide parties in proceedings before the Office with the opportunity to remedy an omission due to exceptional and unforeseeable circumstances, not to remedy mere negligence or errors on the part of the opponent or its representative. 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:2012:1249, § 35).

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier trade mark on which the opposition is based.

On 18/08/2014 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired, after some extensions, on 23/12/2016.

The opponent submitted the required evidence on 16/03/2017, that is, only after the expiry of the abovementioned time limit.

According to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded.

COSTS

According to Article 85(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 Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, 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

Chantal VAN RIEL

Saida CRABBE

Richard BIANCHI

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