Death of representative bad news for NICE DAY opponent

In DA Paloma Santaolalla Martínez v Steyerberger Bekleidungswerk GmbH, the Office for Harmonization in the Internal Market's (OHIM) Board of Appeal has ruled that the time limits for filing an opposition provided by the Community Trademark Implementation Regulation can only be set aside where there are compelling reasons for doing so. In the case at hand, it noted that the death of the opponent's trademark representative was not a compelling reason.

Rather ironically, the case at issue concerned a community trademark application for the word mark NICE DAY in Class 25 of the Nice Classification. Steyerberger Bekleidungswerk GmbH filed the application on September 4 2001 and it was published on June 24 2002.

On September 23 2002 Spanish company DA Paloma Santaolalla Martínez filed a notice of opposition on the basis of its earlier rights in the Spanish word mark NICE DAY.

On May 27 2003 Steyerberger requested that the opponent furnish proof of use of its earlier right. By virtue of Rule 22(1) of the Community Trademark Implementation Regulation, the OHIM set August 7 2002 as the deadline for supplying this proof. Paloma failed to submit any proof within this deadline. Consequently, the OHIM examiner rejected the opposition.

Paloma appealed, arguing that, given the death of its representative during the opposition proceedings, it had not known of Steyerberger's request to submit evidence of its earlier rights in the mark. The main question before the Board of Appeal was whether the board could accept the evidence of use Paloma had failed to present at first instance.

The board held that, notwithstanding that it had discretion to accept facts or evidence submitted outside the prescribed time limits pursuant to Article 74(2) of the Community Trademark Regulation, the peremptory nature of the time limits did not permit the board to jeopardize the principle of legal certainty.

Consequently, the board - referring to consistent case law of the European Court of Justice on the strict application of Community rules on procedural time limits to preserve legal certainty - emphasized that the death of a representative is not sufficient reason for the board to disregard time limits.

Philippe de Jong, Altius, Brussels