EUIPO Fifth Board of Appeal says that a request for cancellation is unfounded when based on non-existent earlier right

A few days ago the EUIPO issued yet another interesting decision, concerning the famous Polo/Lauren logo. 

In September 2004, the Polo/Lauren Company (the EUTM proprietor) sought to register the following figurative mark:

Registration was sought for several goods in Classes 9, 20, 24, and 25 of the Nice Classification.

The trade mark was registered in late 2005.

In 2016, Style & Taste filed a request for declaration of invalidity of the EUTM for all above goods with the EUIPO Cancellation Division. It claimed inter alia that the EUTM proprietor’s mark was based on the earlier Spanish industrial design right (No D0024 087):

In May 2018, the EUIPO Cancellation Division rejected the request in its entirety on the basis that:

• by not submitting the translation of the registered certificate for the earlier Spanish industrial design, the cancellation applicant did not prove the validity and scope of protection of this earlier right,
• mere reference to national law would not be considered sufficient, and
• the cancellation applicant did not submit the necessary national legislation in force and did not put forward a cogent line of argument as to why it would succeed under the specific national law in preventing the use of the contested EUTM.

The decision was appealed to the EUIPO Fifth Board of Appeal in July 2018.

The Board’s decision

Article 60(2)(d) of Regulation 2017/1001 on EU Trade Mark (EUTMR) provides that: 

An EU trade mark shall also be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where the use of such trade mark may be prohibited pursuant to another earlier right under the Union legislation or national law governing its protection, and in particular (d) an industrial property right.

The Cancellation Division – in as much as the courts – must take into account the actual situation and any rights that exist when they make their decision (T-191/04, Metro). The only right relied upon by the cancellation applicant was an earlier Spanish industrial design right (No D0024 087) which lapsed on 22 May 2017.

However, the cancellation applicant provided neither a copy of a request for the renewal of that earlier right, nor did the cancellation applicant argue about the status of that right. Consequently, the Board concluded that the only earlier right on which the request for a declaration of invalidity was based ceased to be valid due to its non-renewal. Therefore, the request for a declaration of invalidity was unfounded and rejected since there is no earlier right within the meaning of Article 60(2) (d) EUTMR.

Therefore, there was no need to decide on whether the cancellation applicant was able to meet the requirements of invalidity laid down by Article 60(2) (d) EUTMR. The appeal was thus dismissed.

Claim it … and prove it!

The case is interesting because, among other things, it shows once again that, if you claim something, you must prove it … and prove it adequately. In this sense, IPKat readers will be able to recall that poor and inadequate evidence led for instance the EUIPO Cancellation Division to order the cancellation of McDonalds’ ‘BIG MAC’ trade mark (see here). Providing appropriate evidence is key in determining whether you’ll succeed or … sent back to the drawing board.