Grace period not always the saving grace

When an opposition is filed against an application for an EU trademark, the opponent has to substantiate its earlier rights on which the opposition is based. Moreover, this must be done within the time limit set by the EUIPO to submit arguments and evidence in support of the opposition. If the earlier rights are due for renewal before the end of this time limit, the opponent cannot simply refer to the grace period for renewal as a means of substantiation according to a recent decision of the Board of Appeal.

In the case at hand the opponent had filed its opposition on 27 July 2022 based on a Spanish trademark that was due for renewal on 8 October 2022.  After declaring the opposition admissible, the EUIPO had set the time limit for the opponent to substantiate the earlier mark and submit further material in support of the opposition on 25 January 2023, which was extended to 25 March 2023 at the request of the opponent, which in turn was automatically extended to 27 March 2023, given that 25 March 2023 was a Saturday when the EUIPO is closed.

On 27 March 2023 the opponent filed an extract from the database of the Spanish Patent and Trademark Office (OEPM) with a query date of 18 September 2020, together with an English translation.. On 13 April 2023, the EUIPO replied, stating that the opponent failed to substantiate the Spanish mark on which the opposition was based within the specified timeframe. The EUIPO also announced its intention to take a decision based only on the available evidence. The decision followed on 7 June 2023 and rejected the opposition in its entirety because the opponent had failed to provide evidence of the renewal in accordance with the EUIPO’s guidelines.

The opponent appealed the decision, claiming that the Opposition Division erroneously only took the expiration date of the Spanish mark into account and not the grace period for its renewal, which did not lapse until 8 April 2023, i.e. after the time limit to substantiate the opposition. The opponent further submitted evidence of a request for renewal filed on 2 June 2023 and a petition to reinstate its Spanish mark of 5 June 2023 with the OEPM.

None of this however convinced the Board of Appeal, who ruled that proof of the existence, validity and scope of protection of the earlier mark or right is not a matter of admissibility of the opposition, but a matter of substantiation of it and that the opponent must submit a renewal certificate or equivalent document in order to prove that the period of protection of the earlier mark extends beyond the time limit for substantiation. According to the Board, accepting the validity of the earlier mark purely based on the existence of a grace period directly contradicts the legal provisions, both in letter and spirit.

After having clarified that the opponent cannot rely on the mere existence of a grace period, the Board of Appeal then goes on to dismiss the opponent’s reasoning that the earlier right was valid at the time the opposition decision(?) was taken due to the renewal request and petition to reinstate its mark with the OEPM.

In this respect the Board of Appeal indicates that, while it is possible to submit evidence for the first time at the appeal stage, such evidence can only be taken into account if it supplements evidence that was timely submitted. Since no evidence of renewal was submitted at the first instance, the Board finds that it has no room to exercise its discretion to take into account the belated materials submitted by the opponent as they are entirely new. Even if the materials would have been admissible, the Board would still have rejected the opponent’s claim since the renewal request was not made until the grace period had also lapsed.

Finally, the Board of Appeal also rejects the opponent’s request to suspend the appeal proceedings until the OEPM  had taken a decision in relation to the petition to reinstate the earlier Spanish trademark. According to the Board, granting such suspension would not be fair to the applicant of the opposed mark. The fault for the rejection of the opposition lies entirely with the opponent, who failed to renew the earlier mark even during the grace period, a fact to which the applicant did not contribute at all. Therefore, the Board sees no reason to suspend the proceedings, even if the petition to reinstate the opponent’s mark would be successful.

For completeness’ sake it must be stated that at the time of this writing, the decision of the Board can still be further appealed before the General Court, who may or may not decide otherwise.

For now, it follows from the Board’s decision that parties who wish to oppose EU trademark applications must pay close attention to the validity of the earlier right on which they want to base their opposition. If no proof of the existence, validity and scope of these rights is provided before the due date for substantiation of the opposition it is game over with no possibility to remedy the rejection of the opposition in appeal.

At De Clercq and Partners, we assist our clients in navigating these challenges, maximizing their chances of success and avoiding pitfalls.  Do not hesitate to contact us should you have any questions in relation hereto.