In a case of an application for the protection of a design, the CFI ruled on the “restitutio in integrum” after a missed deadline for remedying deficiencies at the EUIPO. Indirect evidence is possible, but there is a mandatory duty of care.
Jeffrey Scott Crevier (USA) filed a Community design application in September 2018, searching protection for the territory of the EU. The design showed an air freshener. The application was accompanied by seven views of the design and claimed priority to U.S. design application No. 29,641,525.
During the application process, Mr. Crevier was notified in writing by the European Office (EUIPO) that there were deficiencies in the views of the design and also in the evidence claiming the earlier priority; he was requested to correct these deficiencies within the time limit.
Time limit for remedying deficiencies
EUIPO sets a clear time limit for remedying deficiencies, which applies to both EU trademark applications and Community design applications. If an application does not meet the requirements, the Office invites the applicant to remedy the deficiencies or default within two months from the date of notification of the deficiency.
In this case, the deadline for correcting deficiencies in the attached views of the design was February 17, 2019, and this already included the five-calendar-day extension provided for in the case of transmission by electronic means, an official rule of the EUIPO.
Time limit missed for correcting deficiency
Mr. Crevier then provided a certified copy of the U.S. application for the design, thus the deficiency with respect to the priority claim was corrected, and the Office also notified him of this on December 12, 2018.
Subsequently, Mr. Crevier designated a professional representative (this was communicated electronically to EUIPO). However, this electronic communication was not received until February 28, 2019 – and thus after the deadline for correcting deficiencies – via the user area of an account opened at EUIPO.
That electronic communication also advised that the professional representative had already called EUIPO on January 21 and 22, 2019, first to speak with the examiner, then to learn how to respond to the notice of deficiency, since there was no “click to reply” button associated with the communication in the “user area” of his EUIPO account, and to request a callback. Since there was no callback, he responded to the deficiency notice sent by airmail to EUIPO on January 22, 2019, the representative claimed, and supported this with a copy of the letter.
But, there is nothing more than this electronically transmitted copy of the letter as evidence of the letter allegedly sent by airmail.
As a result, EUIPO refused the Community design application. Plaintiff Crevier did not want to accept this and requested reinstatement of the application before the EUIPO according to Art. 67 of Regulation No. 6/2002. This case has now been decided by the European Court of Justice (Court of First Instance, CFI).
CFI emphasizes duty of care
The CFI dismissed the action. A prerequisite for the restoration of previous rights – called ‘restitutio in integrum’ – is the duty of care, the court emphasized. In principle, it must be assumed that an effective system of internal monitoring and control of compliance with deadlines takes place if the posting of postal items with normal mail is used as a means of communication. This must also include verification of receipt of these items by the recipient, the court ruled.
Such a requirement also does not violate the principle of proportionality, the court added. For example, the representative could also have used the fax machine to transmit his response to the notice of defects.
Moreover, it also raises questions that he sent the airmail letter in a hurry without entering it in the outgoing mail log, even though there were almost three weeks left at the end of January until the set deadline expired.
Restitutio in integrum can be granted only in the case of extraordinary and thus, according to experience, unforeseeable events, the court stressed.
Comparable decision was different
In vain, claimant Crevier referred to the comparable and different decision SunPark Holidays/Sunparks (R 1928/2011-4, Sun Park Holidays v Sunparks, 2012), in which the Board of Appeal had accepted indirect evidence. This SunPark Holidays case was entirely different, the CFI ruled, because in that case the existence of irregularities in the functioning of the German postal service had been proven. In addition, the employee of the representative in the Sun Park Holidays/Sunparks case had made an affidavit.
Therefore, Mr. Crevier’s claim was dismissed in its entirety and reinstatement was denied.
Time limit missed? Deficiencies in the application for a trademark / design?
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