of the Second Board of Appeal
of 18 October 2017
In Case R 658/2017-2
One Lincoln Plaza
New York 10023
United States of America
represented by JOSHI WORLDWIDE IP, Citypoint, 1 Ropemaker Street, London EC2Y 9HT, United Kingdom
Alibaba Group Holding Limited
Fourth Floor, One Capital Place, P.O. Box 847
George Town, Grand Cayman
represented by DECHERT LLP, 160 Queen Victoria Street, London EC4V 4QQ, United Kingdom
APPEAL relating to Opposition Proceedings No B 2 477 126 (European Union trade mark application No 12 498 424)
The SECOND Board of Appeal
composed of A. Szanyi Felkl as a single Member having regard to Article 165(2) and (5) EUTMR, Article 36 EUTMDR / Article 1(c)(2) BoA-RP and Article 10 of the Decision of the Presidium on the organisation of the Boards of Appeal as currently in force, and to the Second Board’s Resolution No 2014-1 of 3 June 2014 on decisions by a single Member
Registrar: H. Dijkema
gives the following
By an application filed on 14 January 2014, Alibaba Group Holding Limited (‘the applicant’) sought to register the word mark SESAME as a European Union trade mark (‘EUTM’) for goods and services in Classes 9, 16, 35, 36, 38, 39, 41, 42 and 45.
On 13 August 2014, Sesame Workshop (‘the opponent’) filed an opposition against all the goods and services, after a limitation made by the opponent on 22 April 2016, on the basis of the earlier EUTM registration No 6 982 292 for the word mark SESAME STREET, filed on 12 June 2008 and registered on 9 July 2009 for goods and services in Classes 9, 16, 25, 28 and 41, and for the non-registered trade mark SESAME STREET, used in all the Member States of the European Union. The opposition was based on Articles 8(1)(b), 8(4) and 8(5) EUTMR.
On 31 January 2017, the Opposition Division adopted a decision (the ‘contested decision’) which partially upheld the opposition for some of the goods and services.
On 31 March 2017, the opponent submitted a notice of appeal, received by the Office on the same day, mentioning that the grounds of appeal would follow and requesting the Board of Appeal to partially annul the contested decision. In the letter accompanying the notice of appeal, the opponent also informed the Board that a request for revocation of the contested decision had been submitted to the EUIPO on 30 March 2017.
No statement of grounds was filed within the four-month time-limit set by Article 68 EUTMR (ex Article 60), which expired on 5 June 2017.
By letter dated 6 July 2017, the Registry of the Boards of Appeal informed the opponent of the possible inadmissibility of the appeal due to the fact that no written statement setting out the grounds of appeal had been submitted within the required deadline or to date. The opponent was invited it to file observations in order to provide the Board with any supporting evidence regarding those findings no later than 11 September 2017.
No reply to the above communication was received.
All references made in this decision should be seen as references to the EUTMR 2017/1001 (OJ L 154, 16.6.2017, p. 1), codifying EUTMR 207/2009 as amended, unless specifically stated otherwise in this decision.
Article 68 (1) EUTMR (ex Article 60), fourth sentence, requires that a written statement of grounds of appeal be filed within four months of the date of notification of a contested decision. If an appeal does not comply with this requirement, the Boards of Appeal must reject it as inadmissible, pursuant to Article 23(1)(d) EUTMDR (ex Rule 49(1) CTMIR).
In the present case, the aforementioned time-limit expired on 5 June 2017. Thus, since no written statement setting out the grounds of appeal, or any further written communications, were received by the Office, the appeal is to be rejected as inadmissible in accordance with the above mentioned legal provisions.
Notwithstanding the above, the Board invites the Opposition Division to give due consideration to the request for revocation filed by the opponent on 30 March 2017, pursuant to Article 103(4) EUTMR (ex Article 80(3)), and further, to observe Article 102(1) EUTMR, (ex Rule 53 CTMIR), which apply to the case at hand and which set forth that when the Office becomes aware, of its own motion or at the instance of a party to the proceedings, of an obvious mistake in a decision, it shall ensure that the mistake is corrected by the department responsible.
Appeal proceedings comprise two separate stages. According to Article 70(1) EUTMR, (ex Article 63(1)), the first stage is the appeal admissibility and the second is the examination of the appeal proper. The first stage is always an ex parte stage, as is the admissibility of the opposition (see in this regard 18/10/2012, C‑402/11 P, Redtube, EU:C:2012:649, § 49-51).
In the appeal admissibility stage the only party is the appellant (in this case the opponent), in accordance with Article 70(1) EUTMR and Article 23 EUTMDR.
As the appeal is to be rejected as inadmissible, prior to the examination of the appeal proper, no decision on costs of the appeal can be taken, because according to Article 109 EUTMR (ex Article 85) the costs decision presupposes necessarily the existence of two parties in the proceedings. In any event, the appellant has to bear its own costs and fees in the present appeal proceedings.
On those grounds,
Rejects the appeal as inadmissible;
Declares that the contested decision has become final, including the decision on costs.
A. Szanyi Felkl
p.o. P. Nafz
18/10/2017, R 658/2017-2, SESAME / SESAME STREET et al.