The Board of Appeal of the EUIPO has ruled in case R 1272/2018-5 STYLE & TASTE, S.L. v The Polo/Lauren Company L.P., which concerns an invalidation procedure against the following European trademark registered in 2005 for classes 9, 20, 24 and 25:
The ground for this invalidation is the following earlier registered Spanish industrial designs:
The EUIPO dismissed the request because:
- 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.
According to the the Board of Appeal, the applicant failed to prove its rights and to submit the necessary argumentation in order to invalidate the trademark at hand. What’s more, after some inspection, it is turned out that the aforementioned designs are not valid anymore due to a lack of renewal.
This case comes to show how essential is the good preparation and implementation for initiating such procedures before the Patent Offices around the world.