The Manual concerning proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs)

Transcription

1 The Manual concerning proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs) Part E, Section 8 Interlocutory Revision

2 2 Table of contents 8.1 GENERAL PRINCIPLES AVAILABILITY OF INTERLOCUTORY REVISION PROCEDURE WHERE INTERLOCUTORY REVISION IS AVAILABLE Verification whether the appeal is deemed to have been filed Verification whether the appeal is admissible Verification whether the appeal is well-founded Situations where the initial decision may be rectified Situations where the appeal is well-founded but interlocutory revision may nevertheless not take place Impact of a request for restitutio in integrum Decision to grant interlocutory revision Deadlines for taking the decision Contents of the decision Appeal against the decision Communication of the decision PROCEDURE WHERE INTERLOCUTORY REVISION IS NOT GRANTED...9

3 3 8.1 GENERAL PRINCIPLES CTMR 60 Interlocutory revision can be granted where an appeal has been lodged against a decision for which the Boards of Appeal are competent pursuant to Article 57 CTMR. CTMR 60 (1) If the division or instance of the Office whose decision is appealed considers the appeal to be admissible and well founded, it shall rectify its decision. This shall not apply where the appellant is opposed by other parties to the proceedings. If the decision is not rectified within one month after receipt of the statement of grounds of the appeal, the appeal shall be remitted to the Boards of Appeal without delay, and without comment as to its merits. The purpose of interlocutory revision is to avoid that the Boards of Appeal are seized with appeals against decisions with regard to which the need of rectification has been recognized by the Office. However, the purpose of interlocutory revision is not to remove mistakes in decisions of the Office without changing the outcome of a case, but to grant the appellant the relief sought by him. 8.2 AVAILABILITY OF INTERLOCUTORY REVISION CTMR 60 (1) Interlocutory revision is not available in inter partes-proceedings. This comprises opposition proceedings, including decisions by which the opposition is rejected as inadmissible, proceedings concerning applications for revocation or declaration of invalidity, and certain proceedings concerning inspection of files (see points and of this Manual). Likewise, interlocutory revision is not available where the time limit of one month following the receipt by the Office of the statement of grounds of appeal has expired. Interlocutory revision requires a pending appeal. Where the appeal has been withdrawn before the one month time limit available for interlocutory revision has expired and before a decision granting interlocutory revision has been taken, interlocutory revision is not available.

4 4 8.3 PROCEDURE WHERE INTERLOCUTORY REVISION IS AVAILABLE Where interlocutory revision is available, the documents making up the appeal shall be transmitted by the Registrar of the Board of Appeal to the head of the department or division of the Office which has taken the decision. This applies also to any subsequent communication relating to the appeal. A copy of the appeal and any such communication shall be communicated to the Legal Department. CTMR 60, 125 The division or department referred to above (hereinafter referred to as the competent division ) shall examine whether interlocutory revision may be granted. CTMR 60 (1) Interlocutory revision may only be granted where the appeal is admissible and well-founded. CTMR 59 IR 49 (3) Verification whether the appeal is deemed to have been filed As an appeal shall be deemed to have been filed only when the appeal fee has been paid, appeals for which the appeal fee has not been paid must be left out of consideration for the purposes of interlocutory revision. IR 49 (3) FR 2 point 18 The competent division must therefore verify whether the appeal fee has been fully paid within the applicable time limit of two months after notification of the contested decision. If that is not the case, interlocutory revision is excluded, and the appeal will have to be remitted without delay, and not necessarily only at the end of the one month time limit, to the Boards of Appeal. FR 8 (3), (4) Under Article 8 (3) FR a payment which is received by the Office after the expiry of the time limit for payment is nevertheless deemed to observe the time limit if the payer made the necessary steps before expiry of the time limit, provided that if these steps were completed only within the ten days before expiry of the time limit, a surcharge must be paid as well. Interlocutory revision

5 5 can only be granted if at the date the payment is received the competent division is immediately satisfied that the conditions of Article 8 (3) FR have been met, that is to say, if the records available at the Financial Service of the Office (such as copy of the order of the bank transfer) evidence the day on which the payment was initiated and if the surcharge, if applicable, has already been received by the Office. An invitation pursuant to Article 8 (4) FR may not be issued by the competent division. Where the appellant or, where the representative of the appellant has introduced the appeal, the representative has a current account, the current account will be debited (for details, see Communication of the President of the Office No 5/96, OJ OHIM 1996, 1460). Where the current account lacks sufficient funds, the procedure of inviting the holder of the current account to fill up the account within one month, pursuant to Article 8 of Decision No EX of the President of the Office as amended (OJ OHIM 1996, 48 and 1996, 1454), will generally not be completed before the expiration of the one month time limit available for granting interlocutory review. In such a case, the competent division must, instead of initiating a notification to fill up the current account, abstain from further steps and without delay remit the case to the Boards of Appeal Verification whether the appeal is admissible CTMR 57, 58, 59 IR 48, 49 (1), (2) The competent division must be satisfied that the appeal is admissible. The appeal must thus comply with the requirements laid down in Articles 57 to 59 CTMR and Rule 48 (1) (c), (2) IR, as well as with all the other requirements to which Rule 49 (2) IR refers. The competent division may in no case contact the appellant so as to have formal or substantive deficiencies of the appeal remedied. This applies as well to oral contacts. Where the requirements for admissibility of the appeal are not met, the case must be remitted without delay to the Boards of Appeal. IR 48 (2), 49 (1) Where the language used is not available for the lodging of the appeal, interlocutory revision shall not be granted. IR 48 (1) (a), 49 (2), 79 Where required indications such as the name and the address of the appellant are lacking or where the signature or the required authorization are missing, interlocutory revision shall not be granted. CTMR 59, 60 (2)

6 6 Where the appeal is not accompanied by a written statement of the grounds of appeal, the competent division must first wait for it to be filed without however contacting the appellant. When the written statement is filed subsequently but within the time limit, the date of filing the written statement is the starting point of the one month time limit for interlocutory revision. When the written statement is not filed within the time limit of four months after the notification of the contested decision as provided for in Article 59 3rd sentence CTMR, the appeal is inadmissible and must therefore be remitted without delay to the Boards of Appeal; this applies even where the competent division is convinced that its decision was incorrect without having to know any statements of the appellant. CTMR 60 (1) Verification whether the appeal is well-founded The competent division has to verify whether the appeal is well-founded Situations where the initial decision may be rectified The relevant date for assessing whether the appeal is well-founded is the date on which the competent division examines whether or not interlocutory revision shall be granted. The appeal is well-founded where the contested decision was incorrect. CTMR 88 (2), (3), 89 (1) IR 1 (1) (b), 9 (3), (4), 31 (6), 33 (3), 76 (1) The appeal is also well-founded where, although the contested decision, generally the refusal of an application pronounced in the course of the examination ex parte, was correct at the time it was taken, the appellant furnishes additional proof or information together with the appeal which remedies the deficiences of the application or request which have been the subject of an objection by the Office and enables the Office to rectify its decision. Interlocutory revision is available in these situations if the consequence of refusal is not the immediate result of a peremptory time period Situations where the appeal is well-founded but interlocutory revision may nevertheless not take place Interlocutory revision may only be granted if the objections raised by the Office are completely overcome. IR 9 For example, interlocutory revision may not take place where the CTM applicant removes the deficiencies pointed out by the Office only partially.

7 7 IR 9 (3), 13 Another example is where the examiner has objected to the list of goods and services and the CTM applicant files a new list of goods and services which fails to overcome the examiner s objections completely, but requires further examination. CTMR 7 (3), 38 (1) IR 11 (1), (3) A further example is where the Office has rejected a CTM application for absolute grounds but the CTM applicant invokes, in his appeal, that the mark has acquired distinctiveness in consequence of the use made of it and this would require further proof. Interlocutory revision is not available when granting it would lead merely to a re-opening of the issue without resolving it. Interlocutory revision need not necessarily result in a positive decision on the main issue (in case of a CTM application, registration or at least publication). Rather, interlocutory revision may grant relief to the appellant to the extent that he seeks a reversal of a decision. In determining whether a decision by means of interlocutory revision would grant the requested relief, the attacked decision and the reasons on which it is based provide the basis for the analysis Impact of a request for restitutio in integrum CTMR 59, 78 Where the notice of appeal, or the written statement of the grounds of appeal, were not filed in time but are accompanied by a request for restitutio in integrum seeking reinstatement into the time limit of two months for lodging an appeal or filing the statement, interlocutory revision may not be granted. Rather, the appeal shall be remitted to the Boards of Appeal without delay Decision to grant interlocutory revision If the competent division comes to the conclusion that interlocutory revision should be granted, it must take a decision to this effect within the time limit of one month after receipt of the statement of grounds of appeal. IR Deadlines for taking the decision The decision must be dispatched on the last day of that time limit at the latest. It does not matter whether the date of notification of the decision is after that

8 8 date. If, for example, the decision is notified by registered mail, the registered letter must be posted on the last day of the time limit at the latest Contents of the decision As far as the contents of the decision is concerned, it must at least provide for the annulment of the initial decision and can make provision for the further treatment of the case, e.g. that the CTM application be registered or the transfer the registration of which has been applied for be entered in the files of the CTM application. IR 51 Furthermore, the decision must state whether or not the appeal fee is reimbursed. The reimbursement of the appeal fee shall be ordered only if such reimbursement is equitable by reason of a substantial procedural violation. The basic consideration is whether or not at the date on which the contested decision was taken there was a fault on the side of the Office. If the contested decision was found incorrect in itself, reimbursement shall be granted. If the contested decision was correct at the date on which it was taken, reimbursement shall be denied except where it is established that a document or observation removing the deficiency raised by the Office was actually received by the Office prior to the decision but not included in the file in time. In case of payment of fees by means of a current account reimbursement shall be effected by crediting the fee to the holder of the current account or, where the appeal fee has not yet been debited, by making a statement in the decision that the appeal fee will not be debited. CTMR Appeal against the decision The decision to grant interlocutory revision as such is not subject to appeal. CTMR 57 (2) Where reimbursement of the appeal fee is denied, that decision is subject to separate appeal Communication of the decision When interlocutory revision has been granted, the competent division shall inform the Registrar of the Boards of Appeal of the result. The competent divison shall as well inform the Legal Departement.

9 9 8.4 PROCEDURE WHERE INTERLOCUTORY REVISION IS NOT GRANTED When the competent division comes to the conclusion that the conditions for granting interlocutory revision are not met, and at the latest when the one month time limit provided for in Article 60 (2) has expired, the competent division must remit the case to the Boards of Appeal without any comment or statement. Remittance without comments in particular means that no decision shall be taken to deny interlocutory revision. The competent division shall inform the Legal Department accordingly.