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OHIM – Developments over the last 12 months The Boards of Appeal

OHIM – Developments over the last 12 months The Boards of Appeal. ITMA - London, 24 March 2006 Giuseppe Bertoli Assistant to the President of the Boards of Appeal. Disclaimer: This presentation is not binding on OHIM. Implementation of legislative changes. Organisational nature

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OHIM – Developments over the last 12 months The Boards of Appeal

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  1. OHIM – Developments over the last 12 monthsThe Boards of Appeal ITMA - London, 24 March 2006 Giuseppe Bertoli Assistant to the President of the Boards of Appeal Disclaimer:This presentation is not binding on OHIM Giuseppe Bertoli

  2. Implementation of legislative changes • Organisational nature • President of the Boards • Grand Board • Single Member • Procedural nature • Reply/Rejoinder • Ancillary appeal • Revision/Revocation • Continuation of proceedings Giuseppe Bertoli

  3. Structure of the Boards of Appeal(Article 131 CTMR – Article 5 BoARP) • - The President of the Boards • Managerial and organisational powers • The Registry • The Scientific Service • The chairmen of the Boards • The members of the Boards Presidium Giuseppe Bertoli

  4. Giuseppe Bertoli

  5. Presidium • Composition (Art. 131 CTMR, Art. 1 RP BoA) • President of BoA 1 • Chairpersons 3 • Members (elected) 3 (9-12) • Total 7 Giuseppe Bertoli

  6. PresidiumArt. 131 CTMR, Art. 1 RP BoA • Responsible for: • Decision on abstract criteria for allocation of cases and designation of Members (decisions of 20.04.2005, 12.07.2005, 7.03.2006) • Rules of procedural nature (decisions 20.04.2005 and 12.07.2005) • Internal rules of organizational nature • Delegation of tasks to Registry (decision 20.04.2005) • Practical instructions of a procedural nature to the parties • Conflicts concerning allocation (1 decision) • Allocation of cases back from CFI/ECJ (3 decisions) Giuseppe Bertoli

  7. Administrative composition of the Boards of Appeal(Article 131 CTMR – Article 1 BoARP) • 1 President of the Boards • 3 Chairpersons • 11 Members • 4 Boards of Appeal • (1st, 2nd and 4th for CTM and 3rd for CRD) + Registry + Scientific Service Giuseppe Bertoli

  8. The Independence of the Members of the Boards of Appeal(Article 131 CTMR) • - The members of the Boards shall be independent. In their decisions they shall not be bound by any instructions (Art.131(4) CTMR). • - BoA-President and chairpersons appointed by the Council on proposal of the Administrative Board (Art. 131(1), 120 CTMR). • Members appointed by the AB, for a renewable term of five years (Art. 131(2) CTMR). • - Removed from office by the ECJ for serious grounds only (Art. 131(1)(3) CTMR). • - Authority of the Boards decides on objective criteria of allocation of cases (Art. 131(1)(a), Art. 1 RP BoA). • - Secrecy of deliberations and voting (Art. 12 RP BoA). Giuseppe Bertoli

  9. Composition of the Boards when taking decisions(Art. 130 CTMR) • The decisions of the Boards of Appeal shall be taken by three members, at least two of whom are legally qualified. • Grand Board, presided by the President of the BoA, if justified (legal difficulty, importance of the case, special circumstances) • - Single Member (no legal difficulty, limited importance, absence of special circumstances) Giuseppe Bertoli

  10. Allocation of casesArticle 131(1) CTMR – Article 1 BoARP – Presidium’s dec. 20.04.05 • Criteria • Subject • CTM: 1st BoA, 2nd BoA, 4th BoA • RCD: 3rd BoA • Language: • DE: 1st BoA, 4th BoA • IT: 1st BoA, 2nd BoA • Other: 1st BoA, 2nd BoA, 4th BoA • Exceptions: • Appeals filed against the same decision • Appeals having the same factual or legal elements • Appeals following an annulment of the CFI/ECJ Giuseppe Bertoli

  11. Grand Board Article 130(3) CTMR, Article 1b BoARP • Grand Board competent when justified by • legal difficulty or • importance of the case • R667/2005-4 legal question of general importance • R856/2004-2 particularly important turnover • special circumstances • R667/2005-4 legal question requiring uniform application • R856/2004-2 issues raised in many proceedings before national Courts Giuseppe Bertoli

  12. Grand Board • Composition (Art. 1a RP BoA, Art. 8 Rules concerning the Organization of the Boards) • President of BoA 1 • Chairpersons 3 • Members (rotating) 5 (of 11) • Total 9 Giuseppe Bertoli

  13. Referral to the Grand Board(Art. 131(3)(4) CTMR - Art. 1(b) BoARP) • By the competent Board (R667/2005-4) or • By the Presidium on proposal • Of the President of the BoA (R856/2004-2) • Of a member of the Presidium • Not by the parties, the President of the Office, another Board • Parties notified of the referral; no possibility to oppose • Possibility to send back; related cases Giuseppe Bertoli

  14. Grand Board, Grand Decision? • CFI / ECJ are not bound to BoA practice (Art. 63 CTMR) • Office bound in the specific case (Art. 62 CTMR) • Authoritativeness of its decisions (guidance) Giuseppe Bertoli

  15. Single MembersArt. 130(5) CTMR, Art. 1c RP BoA, • The Board may devolve or delegate the chairperson the decision to devolve cases to a single member in the following type of cases: • Decisions closing the proceedings following agreement between the parties, • Decisions on the fixing of costs and its review, • Admissibility of the Appeal. • Therefore, there is normally no need to object to the referral to the single member. Giuseppe Bertoli

  16. Revision • - Ex-parte cases: First instance may rectify its decision in ex-parte cases (Art. 60 CTMR) • 3296 CTM appeals, 167 revisions granted • 15 RCD appeals, 9 revisions granted • CTM Inter-partes cases: First instance may rectify its decision in inter-partes cases (only if other party accepts that the decision is rectified) (Art. 61 CTMR) • 734 revisions, 3 granted (out of which, 2 revocations) Giuseppe Bertoli

  17. Case • After the decision to allow an opposition, the Opposition Division realizes that it had not taken into consideration the cancellation of the earlier trade mark. The applicant files an appeal. What can be done to accelerate the proceedings? Giuseppe Bertoli

  18. Revision v. Revocation • Revision of decisions in inter partes appeal proceedings (new Art. 60a CTMR), reimbursement of the appeal fee, if successful (Rule 51 b CTMIR). • However, rectification only with acceptance of the winning party. Where would the advantage be for the opponent if it were to accept? • Better: revocation of the decision by the Office in case of an obvious procedural error attributable to the Office (Art. 77a GMV). Six months, no fee. Reimbursement of the appeal fee? Giuseppe Bertoli

  19. Case • The appellant considers it necessary to respond to the defendant’s observations in reply to his appeal. Can he do so? Giuseppe Bertoli

  20. Reply of appellant(Art. 8(2) RP BoA new) • The statement setting out the grounds of appeal and the response to it may be supplemented by • A reply from the appellant (2 months), • A rejoinder from the defendant (2 months). • Please do not feel obliged to use that possibility and tell the BoA if you don’t! • Without prejudice to • Observations as often as necessary (Art. 61(2) CTMR) • Right of defence (Art. 73 CTMR) Giuseppe Bertoli

  21. Reply/Rejoinder Giuseppe Bertoli

  22. Case on continuation of the proceedings • The respondent in an opposition case at the appeal stage misses the time limit • For the observations to the statement of grounds of the appeal, • For the reply to observations of the defendant or the rejoinder to the reply of the appellant (Art. 8(2) RP BoA), • For the answer to a communication from the Rapporteur (Art. 10 RP BoA). • For a further opportunity to comment (right of defense, Art. 73 CTMR). • Can he request the continuation of proceedings? • Art. 78a CTMR: Two months, fee of 400 €. Giuseppe Bertoli

  23. Art. 78a CTMR excludes the time limits for: Notice of appeal (Art. 59 CTMR) Statement of grounds (Art. 59 CTMR) Payment of appeal fee (Art. 59 CTMR) Acceptance in case of interlocutory revision(Art. 60a CTMR) Restitutio in integrum (Art. 78 CTMR) Rule 50(1.2) CTMIR excludes the application of Art. 78a CTMR to the time limits fixed pursuant to Art. 61(2) CTMR for opposition procedures (not cancellation). Problem 1: Hierarchy of norms? Problem 2: Which time limits would be excluded? O1: Strict interpretation (no time limit excluded) O2: all time limits are subcategories to Art. 61(2) CTMR Continuation of proceedingsArt. 78a CTMR Giuseppe Bertoli

  24. Giuseppe Bertoli

  25. Admissibility fast track(Article 8(1) BoARP • If the Registry detects an irregularity • which is liable to make the appeal inadmissible, • it shall send a reasoned opinion to the chairman of the Board concerned • and the chairperson shall either ask the Board to rule on admissibility • or reserve judgment for final decision Giuseppe Bertoli

  26. Functional continuity: new evidence and subject matter • The Boards are part of the Office • There exists “a continuity in terms of their functions between the Board of Appeal and the examiner” (Cleancare, Hippoviton, Arcol, Focus) • Rule 19(4) CTMIR: the Office shall not take into account submissions and documents not submitted or not translated within the time limits set by the Office Giuseppe Bertoli

  27. New evidenceRule 50(1) second sentence CTMIR • Where the appeal is directed against a decision of an OD, • RULE: the Board shall limit its examination of the appeal to the facts and evidence presented within the time limits set in or specified by the OD in accordance with CTMR and CTMIR, • EXCEPTION: unless the Board considers that additional or supplementary facts and evidence should be taken into account pursuant to Article 74(2) CTMR. Giuseppe Bertoli

  28. New evidence: NOT TAKEN INTO CONSIDERATION • Translation into English of an extract from the official German trademarks database - R253/2005-1 (26.01.2006) • Evidence of the renewal of the earlier mark – R300/2005-1 (20/01/2006) • Evidence of the weakness of the earlier mark – R864/2004-1 (30/11/2005) • Proof on enahanced distinctiveness of the earlier mark – R770/2004-2 (29/11/2005) • New catalogues do supplement the ‘old’ proof of use • and do not only serve to clarify the material already filed – R434/2004-2 (28/11/2005) Giuseppe Bertoli

  29. New evidence: TAKEN INTO CONSIDERATION • An up-to-date certified copy of the earlier registration showing the opponent as the last reported owner merely confirms an extract from a commercial database submitted before OD – R926/2004-1 (16/01/2006) • A decision of the German PTO on the distinctiveness of the element ‘aspi’ is just complementary evidence provided in order to object the arguments raised by the other party – R743/2004-2 (10/01/2006) • A certificate of renewal completing the certificate of registration filed before the opposition division – R799/2004-1 (9/01/2005) • Additional proof of use when the evidence submitted before the opposition division was prima facie sufficient but conteste by the applicant – R389/2004-1 (2/03/2005) Giuseppe Bertoli

  30. / • R 1082/2004-1 7.9.2005 • R 389/2004-1 2.3.2005 • R 641/2000-4 28.6.2005 • R 555/2002-4 7.2.2005 • R 606/2002-4 8.12.2004 • R 883/2004-1 21.4.2005 / Silk Cocoon / COCOON Careflex / EMEND / EMED / INTERNIT Giuseppe Bertoli

  31. The subject matter of the appeal before the Boards(Art. 8(3) BoARP) • In inter partes proceedings, • the defendant may, • in his or her response, • seek a decision annulling or altering the contested decision • on a point not raised in the appeal. • Such submissions shall cease to have effect should the appellant discontinue the proceedings. Giuseppe Bertoli

  32. Case 1 • The opposition is based on two earlier trade marks. The Opposition Division concludes that • Insufficient evidence was given for the earlier mark A. • There is a likelihood of confusion with trade mark B and the application has to be rejected. • The applicant files an appeal. • Can the opponent defend itself against the rejection of trade mark A? Giuseppe Bertoli

  33. Opponent’s “counterclaim” • The opponent can request new examination of trade mark A. • His own appeal would be inadmissible (Art. 58 CTMR). Giuseppe Bertoli

  34. Case 2 • The applicant requests proof of use of the earlier trade mark. • The Opposition Division considers the proof of use as sufficient, however, rejects likelihood of confusion. • The opponent files an appeal. • Can (must) the applicant invoke the wrong examination of the proof of use? Giuseppe Bertoli

  35. Applicant’s “counterclaim” • The applicant can request new examination of the proof of use. • His own appeal would be inadmissible (Art. 58 CTMR). Giuseppe Bertoli

  36. Case 3 • Applicant and Opponent partially wins / loses concerning different G&S in an opposition case. • Within the time limit to file an appeal only the applicant files an appeal. • Can the opponent in its reply to the appeal still attack the contested decision in relation to the goods that he had lost? Giuseppe Bertoli

  37. Ancillary Appeal ? • Problem: Relation between time limit to file the notice of appeal (Art. 59 CTMR) and the defendant’s ancillary rights of defence (Art. 8 RP BoA). • Opinion 1: Art. 8 RP BoA applies. R486/2004-1 (24/02/2005) • Opinion 2: Art. 59 CTMR cannot be derogated by Art. 8 BoARP (hierarchy of the norms) Giuseppe Bertoli

  38. FEES Appeal fee 800 € (Reimbursement by OHIM in case of revision granted or successful appeal and substantial procedural violation, new Rule 51 CTMIR) Opposition fee, 350 € Total 1150 € COSTS of professional representation Problem: no transitory rules for new Rule 94(3),(7)(d) CTMIR Opinion 1: when decision on appeal after 25.07.05, appeal costs at 550 €, opposition costs at 300 €. Opinion 2: when decision on opposition before 25.07.05, opposition costs at 250 €. Total: 800 (850) € Fixing of costs Giuseppe Bertoli

  39. Fixing of costs(Art. 81(6) CTMR, Rule 94 CTMIR since 25 July 2005). • Fixing of costs by the Board in the decision, when limited to • Fees • Costs of professional representation. • If opponent/appellant wins, he can claim: 1950 € (2000 €) • If applicant/respondent wins, he can claim: 800 € (850 €) Giuseppe Bertoli

  40. Thank you for your attention! More information on www.oami.eu.int and www.curia.eu.int Feedback: giuseppe.bertoli@oami.eu.int Giuseppe Bertoli

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