On 19th August 2016, the EUIPO issued a decision regarding the deadline for making effective fee payment in EU Trademarks opposition proceedings.
The opposition was based on opposing mark “MIRANIUS” and the contested trademark application was EUTM “MIRA”. The opposition was based on alleged likelihood of confusion. In the result of the proceeding the opposition was dismissed for procedural reasons.
According to Article 41(1) EUTMR a notice of opposition can be filed within 3 months from the publication of the EUTM application. The opposition may be duly entered only if the fee has been paid. If the fee is made after the expiry date the full amount is refunded to the payer. According to Article 144 (b) (3) EUTMR payment should be considered to have bene made to the office on the date on which the amount of the transfer is actually entered in a bank account held by the Office.
According to Article 144 (b) (3) EUTMR, where payment of a fee is not considered to have been made until after the expiry of the period in which it was due, it shall be considered that this period has been observed if evidence is provided to the Office that the person who made the payment in a Member State, within the period within which the payment should have been made, duly gave an order to a banking establishment to transfer the amount of the payment, and paid a surcharge of 10% if the relevant order to the banking establishment has been given not later than 10 days before the expiry of the period for payment.
In addition, the Office may request the person who made the payment to produce evidence as to the date on which the order to the banking establishment as referred to in paragraph 3 was given and, where required, to pay the relevant surcharge within a period to be specified by it. If the person fails to comply with that request or if the evidence is insufficient, or if the required surcharge is not paid in due time, the period for payment shall be considered not to have been observed.
In the present case, the application was published on 12/9/2014 and the period of 3 months for filing an opposition started 6 months after the date of first republication so in the result on 12/03/2015 and expired on 12/06/2015.
The opposition was received on 11/06/2015 and the opposition fee was received in the bank account on 13/06/2015 (one day after the expiry date). The opponent added evidence that the payment has been ordered on 12/06/2015.
The Office informed the opponent that, although the opposition fee had been received after the expiry of the opposition period, the fee would have been considered as duly entered upon payment of a 10% surcharge by the deadline of 30/07/2016. The surcharge was applicable because the order to transfer the payment was given less than 10 days before the expiration of the opposition period.
However, the opponent did not pay the surcharge and the opposition was refused.
The present case show how important is the awareness of technical regulations related to proceedings before the EUIPO in order to avoid undesired loss of rights.
Authors:
Riccardo Ciullo
Judyta Kasperkiewicz
