T 0660/15 - Transfer of opposition

Key points

• The opponent TCL submits that the opposition was transferred by way of universal succession.
• " In order to accept that a transfer of opposition has taken place by way of universal succession, it must be sufficiently proven that all of TCL's business assets have been transferred to TCBV. Hereby, the principle of free evaluation of evidence applies. In decision T 2357/12 the Board stated that the concept of universal succession had to be interpreted autonomously, i.e. independently from national law. An essential point for accepting universal succession was that there was only one transferee possessing all the assets and the former opponent had ceased to exist, so that no legal uncertainty could arise about who the opponent was." 
• TCL was an IP holding entity in the Tenaris group. TCL was registered in Saint Vincent and the Grenadines. TCBV is registered in The Netherlands and is the alleged successor opponent. 
• "Due to a corporate restructuring, Tenaris had decided to transfer and assign the TCL business assets from TCL to TCBV and to liquidate and dissolve TCL. Prior to TCL's liquidation and dissolution, all of TCL's business assets were transferred to TCBV. This is corroborated by the declaration dated 12 April 2017 of Mr Bollers, a barrister at law and notary public, who acted as the liquidator and who stated therein, that all of TCL's intangible assets had been transferred and assigned to TCBV and not to any other legal entity." 
• " Furthermore, the respondents were of the view that universal successorship cannot be acknowledged as long as it has not been proven that also the liabilities were taken over by TCBV. However, from point 3 of Mr Bollers's declaration of 12 April 2017, it follows that TCL's intangible assets, including any related duties and obligations were transferred to TCBV. Moreover, in his request to the financial services authorities dated 7 June 2017 he stated that after an advertisement in the relevant Government Gazette he had not received any claims and accordingly the requirements for a dissolution were complied with. This shows that there were no outstanding liabilities." 
• " Accordingly, the Board considers it as sufficiently proven that TCBV is the universal successor of TCL, and on this basis, the Board accepts that the opponent's status was transferred from TCL to TCBV and that the procedure is to be conducted with TCBV as the appellant." 
• This decision appears to be in line with T2357/12, hn.3. 

EPO T 0660/15 -  link

Reasons for the Decision

1. Admission of Mr Bollers's declaration dated 19 October 2018

Although this declaration was only filed one day before the oral proceedings, the Board admitted it into the proceedings because it did not raise any new issues but merely confirmed statements made earlier in the procedure. Thus, the respondents and the Board could be reasonably expected to deal with it without a postponement of the oral proceedings (Articles 13(1) and (3) RPBA).

2. Transfer of opposition

The status as an opponent cannot be freely transferred (G 2/04, OJ EPO 2005, 549). It can only be transferred in case of universal succession of the opponent, or when a relevant part of the opponent's business has been transferred (singular succession) (G 4/88, OJ EPO 1988, 480).

In order to accept that a transfer of opposition has taken place by way of universal succession, it must be sufficiently proven that all of TCL's [Tenaris Connections Limited (TCL) ] business assets have been transferred to TCBV [Tenaris Connections BV (TCBV)] . Hereby, the principle of free evaluation of evidence applies. In decision T 2357/12 the Board stated that the concept of universal succession had to be interpreted autonomously, i.e. independently from national law. An essential point for accepting universal succession was that there was only one transferee possessing all the assets and the former opponent had ceased to exist, so that no legal uncertainty could arise about who the opponent was.

From the declarations of Mr Lev and Mr Ramos, the former directors of TCL, it follows that TCL was a technology holding company and that TCL's business assets consisted of intangible assets including a worldwide patent portfolio, technical information, know how, trade and industrial secrets, licences and other agreements. In addition, TCL was only in the possession of some monetary assets to cover its costs and expenses. Due to a corporate restructuring, Tenaris had decided to transfer and assign the TCL business assets from TCL to TCBV and to liquidate and dissolve TCL. Prior to TCL's liquidation and dissolution, all of TCL's business assets were transferred to TCBV. This is corroborated by the declaration dated 12 April 2017 of Mr Bollers, a barrister at law and notary public, who acted as the liquidator and who stated therein, that all of TCL's intangible assets had been transferred and assigned to TCBV and not to any other legal entity. This was confirmed in his declaration of 19 October 2018.

The respondents argued that the European patents which had been transferred from TCL to TCBV, as exemplified by exhibit C, had already been transferred in June and July 2016 and thus before Mr Bollers had been appointed as liquidator in November 2016. At what point in time the European patents were transferred does not play a role in the present case. By this, the respondents seem to want to cast doubt on whether Mr Bollers was in a position to know what had happened before his appointment. However, even though the transfer had taken place before his appointment as liquidator, his role in this process was to make sure that the requirements for the liquidation had been fulfilled and to confirm that all assets had been transferred, even before his appointment, so that the company could be deleted from the register.

The respondents submitted Form 17 filed by TCL with the authorities of Saint Vincent and the Grenadines and argued that this showed that the object of TCL was not only the holding of technology but also other business, like e.g. bulk trading and wholesaling and the provision of services relating thereto. In the respondent's view this showed that TCL also carried out activities other than applying for patents and licensing patents and thus that not all the assets of TCL had been transferred to TCBV. The appellant, however, convincingly explained that it was usual practice that a business was broadly described when a company was registered in order not to be limited and that it did not necessarily mean that it performed all of this business. TCL acted exclusively as a technology holding company and did not conduct any other business. As set out above, this is clear from the declarations of Mr Lev and Mr Ramos and the Board sees no reason to doubt it.

Furthermore, the respondents were of the view that universal successorship cannot be acknowledged as long as it has not been proven that also the liabilities were taken over by TCBV. However, from point 3 of Mr Bollers's declaration of 12 April 2017, it follows that TCL's intangible assets, including any related duties and obligations were transferred to TCBV. Moreover, in his request to the financial services authorities dated 7 June 2017 he stated that after an advertisement in the relevant Government Gazette he had not received any claims and accordingly the requirements for a dissolution were complied with. This shows that there were no outstanding liabilities.

Thus, the appellant has convincingly demonstrated that all assets and liabilities were transferred from TCL to TCBV and not to anybody else. With effect from 7 June 2017, TCL was dissolved and ceased to exist, as is clear from the Certificate of Dissolution from the Company Register from Saint Vincent and the Grenadines (Exhibit E).

The respondents furthermore submitted that in case T 2357/12 the evidence presented was more conclusive and that the evidence in the present case was not as strong as the one in T 2357/12. However, each case has to be examined, and evidence has to be evaluated, on the basis of the facts of the particular case and therefore, reference to evidence in another case, which was based on different facts, is not useful.

Accordingly, the Board considers it as sufficiently proven that TCBV is the universal successor of TCL, and on this basis, the Board accepts that the opponent's status was transferred from TCL to TCBV and that the procedure is to be conducted with TCBV as the appellant.