Case number: Up-1201/05. ECLI: ECLI:SI:USRS:2007:Up

Case number: Up-1201/05 ECLI: ECLI:SI:USRS:2007:Up.1201.05 Challenged act: The constitutional complaint against Supreme Court Judgment No. I Up 1161/2002, dated 31 May 2005, in connection with Administrative Court Judgment No. U 1683/2000, dated 5 June 2002, and the Slovenian Intellectual Property Office Decision No. 670-636/95, dated 18 September 2000 Operative provisions: The constitutional complaint against Supreme Court Judgment No. I Up 1161/2002, dated 31 May 2005, in connection with Administrative Court Judgment No. U 1683/2000, dated 5 June 2002, and the Slovenian Intellectual Property Office Decision No. 670-636/95, dated 18 September 2000, is dismissed. Abstract: The Constitutional Court rejects a constitutional complaint which is lodged directly against the conduct or omission of the due conduct of the court. From the viewpoint of Article 22 of the Constitution, it is important whether the departure from the established administrative case-law was appropriately reasoned. It is not a violation of the right determined in Article 22 of the Constitution if an appeal supplemented after the expiry of the preclusive time-limit is not taken into consideration, as the determination of such time-limits is in accordance with the Constitution. A constitutional complaint cannot be substantiated by the violation of EU law if none of the human rights or fundamental freedoms were violated therewith. Thesaurus: 1.5.51.2.6 - Constitutional Justice - Decisions - Types of decisions of the Constitutional Court - In constitutional-complaint proceedings - Dismissal of a constitutional complaint. 5.3.13.18 - Fundamental Rights - Civil and political rights - Procedural safeguards, rights of the defence and fair trial - Equality of arms. 5.3.36 - Fundamental Rights - Civil and political rights - Right to property. 2.1.1.3 - Sources of Constitutional Law - Categories - Written rules - Community law. 2.1.3.2.2 - Sources of Constitutional Law - Categories - Case-law - International case-law - Court of Justice of the European Communities. 2.2.1.6 - Sources of Constitutional Law - Hierarchy - Hierarchy as between national and non-national sources - Community law and domestic law. Legal basis: Constitution (URS), Arts. 22, 33, 67 Constitutional Court Act (ZUstS), Art. 59.1

Cases joined: PDF Format: Up-1201-05..pdf Full text: Up-1201/05-19 6 December 2007 D E C I S I O N At a session held on 6 December 2007 in proceedings to decide upon the constitutional complaint of the company Telekom, d. d., Ljubljana, represented by Roman Završek, attorney-at-law in Ljubljana, the Constitutional Court d e c i d e d a s f o l l o w s: The constitutional complaint against Supreme Court Judgment No. I Up 1161/2002, dated 31 May 2005, in connection with Administrative Court Judgment No. U 1683/2000, dated 5 June 2002, and the Slovenian Intellectual Property Office Decision No. 670-636/95, dated 18 September 2000, is dismissed. R e a s o n i n g A. 1. The Slovenian Intellectual Property Office (hereinafter referred to as the SIPO) refused the complainant's application for a national trade mark on the name rumene strani on the basis of the first paragraph of Article 58 of the Industrial Property Act (Official Gazette RS, No. 13/92 et sub. hereinafter referred to as IPA) due to the existence of absolute grounds for refusal according to items 2, 3, 4, and 5 of the first paragraph of Article 19 of IPA. The Administrative Court dismissed a complaint filed by the complainant and upheld the decision of the SIPO. The Administrative Court held that the SIPO correctly examined the complainant's application by taking into consideration not only the circumstances which existed at the time of filing the application but also the circumstances which existed at the time of deciding on the application, and that it is not the case of a word combination which is a result of the complainant's creativity nor is it a case of goods or services which the complainant started to produce or perform first, rather it is a translation of a word combination yellow pages, which is generally established in other countries whose economies and information technology are more developed. The Supreme Court dismissed the complainant's appeal. It upheld the position of the Administrative Court regarding the facts which were taken into consideration in deciding on the registration of the trade mark regarding the time of their occurrence. The Supreme Court did not consider the allegations contained in the supplementation of the appeal by which the complainant informed the Supreme Court of the application and registration procedure of a Community trade mark with the Office for Harmonisation in the Internal Market (hereinafter referred to as OHIM), because they were filed after the expiry of the time-limit for the appeal.

2. The complainant does not agree with the above-mentioned decision and claims a violation of Articles 2, 3a, 14, 22, 23, 25, 33, 60, 67, 125, and 153 of the Constitution, as well as Articles 6, 13, and 14 of the Convention for the Protection of Human Rights and Fundamental Freedoms (Official Gazette RS, No. 33/94, IT, No. 7/94 hereinafter referred to as ECHR) and Article 1 of Protocol No. 1 to the ECHR. In the opinion of the complainant, the circumstance that the state of the facts which was established five years after the application for the trade mark had been filed was considered, entails a violation of substantive law and the unequal treatment of the complainant. The complainant is of the opinion that the SIPO should only consider the time when the application for the trade mark was filed, when the word combination rumene strani was not yet known, and alleges that the SIPO did not explain how on the basis of information from the year 2000 it made conclusions about the state of affairs in 1995, and that the courts in the judicial review of administrative acts proceedings upheld this uncritically. On 20 September 2004, in the complainant's case the OHIM allegedly registered rumene strani as a Community trade mark in accordance with Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark[1] (hereinafter referred to as Regulation No. 40/94). The complainant allegedly informed the Supreme Court of the registration of the Community trade mark, the Supreme Court did not, however, take a position on such, as the supplementation of the appeal was allegedly filed after the expiry of the time-limit for the appeal. Thereby the Supreme Court allegedly violated international acts that are binding on Slovenia due to the fact that during the period of deciding the Republic of Slovenia had become a Member State of the European Union (hereinafter referred to as the EU) and therefore the Supreme Court should also have considered EU law, particularly the case law of the Court of Justice of the European Communities (hereinafter referred to as the Court of Justice) and the case law of the OHIM. It allegedly follows from the case law of both authorities, and particularly from the Court of Justice Judgment in the case Baby-Dry,[2] that there exist no absolute grounds for the refusal of the word combination rumene strani as established by the SIPO. Furthermore, the complainant believes that it was treated unequally, on one hand because the SIPO, based on the same state of the facts and the same legal basis, registered as a trade mark the word combination gelbe Seiten to another person, although such is only a translation of the word combination rumene strani. On the other hand, the complainant was treated unequally because IPA and Regulation No. 40/94 determine the same absolute grounds for refusal, whereby the OHIM, on the basis of the same state of the facts and the same legal basis, registered even two Community trade marks, i.e. the complainant's rumene strani (Reg. No. 003205309) and the trade mark yellow pages (Reg. No. 000161034) of the Belgian company Promedia. In addition, the Supreme Court did not answer the allegations that double standards were used. Finally, the complainant alleges that the proceedings were pending for a disproportionately long time, as from the time of applying for a trade mark until the decision of the Supreme Court more than ten years had elapsed. Therefore, the complainant also claims damages for the violation of the right to a hearing within a reasonable time, for which the Constitutional Court is allegedly competent on the basis of Article 160 of the Constitution. 3. By Order No. Up-1201/05, dated 26 June 2007, the Constitutional Court accepted the constitutional complaint for consideration, and in the part which referred to the right to a hearing within a reasonable time it was rejected. In accordance with Article 56 of the Constitutional Court Act (Official Gazette RS, No. 15/94 ZUstS/94), the constitutional complaint was sent to the Supreme Court, which did not reply thereto. 4. The constitutional complaint was also served on the SIPO, which replied to the constitutional complaint. In its reply it claims that the complainant did not demonstrate a legal interest to lodge a constitutional complaint because it had obtained the Community trade mark. With reference to the applications regarding the name rumene strani which were filed and which could interfere with the legal benefits of the complainant, the SIPO alleges that it refused all (three) applications regarding

registering this name as a trade mark. Claiming seniority in accordance with Article 34 of Regulation No. 40/94, the possible prohibition on the use of the Community trade mark yellow pages of the company Promedia allegedly depends on many uncertain factors. Regardless of the above-mentioned, even if it obtained the national trade mark rumene strani, the complainant could not prohibit the company Promedia from using the trade mark yellow pages for goods and services which are not listed in its application as well as for goods and services which are not similar to those listed in its application. The SIPO explains in great detail why, in its opinion, the word combination applied for is not suitable for distinguishing the goods and services applied for. Thereby, it allegedly considered not only the state of the facts when the application had been filed, but also all later circumstances established until the time of the issuance of the decision, as allegedly required by Article 139 of the General Administrative Procedure Act (Official Gazette RS, No. 80/99 et sub.). The SIPO denies that it treated the complainant unequally and explains that in the case of the registration of the trade mark gelbe Seiten they had made a mistake and that this trade mark had later been revoked. The SIPO is of the opinion that the violation of the right determined in Article 22 of the Constitution cannot be substantiated by referring to a case or cases in which the decision was unlawful and the application of the law erroneous. In addition, the SIPO explains that in the registration procedure of the Community trade mark rumene strani, the OHIM did not consider the circumstances which referred to the new Member States, as the complainant's application had been filed before the date of the accession of Slovenia to the EU, whereas Regulation No. 40/94 prohibits that an application be refused on the basis of any of the absolute grounds for refusal if these grounds became applicable merely because of the accession of a new Member State. This allegedly entails that the OHIM did not examine the meaning of the word combination rumene strani in the Slovene language and the existence of the possible absolute grounds for refusal in the territory of the Republic of Slovenia. With reference to such, in the opinion of the SIPO it must also be taken into consideration that the OHIM is an independent body of the EU which does not have any influence on administrative and court proceedings in the Republic of Slovenia, as national authorities and courts are independent. The OHIM should decide only on the basis of the facts which it establishes itself, whereby in proceedings it does not seek opinions of national authorities. Thus, in the opinion of the SIPO, the only legally binding sources are Court of Justice decisions, however, only in cases which concern the same or a similar state of the facts and the substantive basis. The Baby-Dry case, to which the complainant refers, concerns a different state of the facts and for this fact alone it does not need to be considered. In addition, the cited decision was adopted in 2001, whereas the SIPO decided in 2000. The SIPO proposes to the Constitutional Court that it dismiss the constitutional complaint as unfounded. 5. The complainant rejects the allegations of the SIPO contained in the reply and claims that the SIPO did not succeed in demonstrating that the challenged decision did not violate the complainant's human rights and fundamental freedoms. B. 6. In accordance with the first paragraph of Article 50 of the Constitutional Court Act (Official Gazette RS, No. 64/07 official consolidated text hereinafter referred to as CCA), the Constitutional Court reviews a challenged judicial decision only regarding a question whether human rights and fundamental freedoms were violated therewith. Due to the fact that Articles 2, 125, and 153 of the Constitution do not directly regulate human rights and fundamental freedoms, but rather fundamental constitutional principles, they cannot be referred to in order to substantiate a constitutional complaint. Exactly the same applies for Article 3a of the Constitution, which does not directly regulate human rights and fundamental freedoms, but fundamental constitutional principles regarding the possibility to transfer the exercise of part of the sovereign rights [of Slovenia] to international organisations. Therefore, a constitutional complaint cannot be substantiated by a violation of EU law

alone if none of the human rights or fundamental freedoms were violated therewith. 7. The content of Article 6 of ECHR encompasses the human rights to the equal protection of rights and to judicial protection (Articles 22 and 23 of the Constitution), the content of Article 13 of ECHR encompasses the right to legal remedies (Article 25 of the Constitution), whereas the content of Article 1 of Protocol No. 1 to the ECHR is concretized in the human right to private property (Article 33 of the Constitution). The Constitutional Court therefore reviewed the alleged violations of the ECHR from the viewpoint of the protected human rights as determined in the appropriate provisions of the Constitution. 8. From the viewpoint of the right to the equal protection of rights determined in Article 22 of the Constitution (which in proceedings before courts and other state authorities is a special manifestation of the principle of equality before the law determined in the second paragraph of Article 14 of the Constitution), what might be relevant is the complainant's allegation that it was treated unequally because the SIPO registered the word combination gelbe Seiten as a trade mark and because the Supreme Court did not take the case law of the Court of Justice and the case law of the OHIM into consideration, as well as the complainant's supplementations in which it had informed the Supreme Court of the registration of the Community trade mark. 9. Regarding the registration of the trade mark gelbe Seiten, the SIPO has already appropriately explained in the challenged decision why it had decided differently than in the proceedings for registering the discussed trade mark. The constitutional aspect of an inadmissible departure from the established case law requires that the Constitutional Court review whether the departure is appropriately reasoned (in a procedural sense).[3] The above-mentioned standpoint applies also in cases of a departure from administrative case law, such as in the complainant's case. In addition, also the Administrative Court explained to the complainant that the decision on the trade mark gelbe Seiten that the SIPO adopted, which was later revoked as unlawful, does not obligate the SIPO to further adopt an unlawful decision in similar cases and that a violation of the right to the equal protection of rights cannot be substantiated by citing an unlawful case. The Constitutional Court does not have any doubts regarding the consistency of the above-mentioned standpoint with Article 22 of the Constitution. By referring to the right to the equal protection of rights, it namely cannot be required that authorities make their case law uniform in a manner such that they decide erroneously or unlawfully in all cases (see, Constitutional Court Order No. Up-22/94, dated 7 March 1997, OdlUS VI, 82). 10. The Constitutional Court also had to review whether the complainant's allegations that its right to the equal protection of rights determined in Article 22 of the Constitution was violated are substantiated also because of the fact that the uniform and established case law of the OHIM and the Court of Justice were not taken into consideration. The third paragraph of Article 3a of the Constitution determines that legal acts and decisions adopted within international organisations to which Slovenia has transferred the exercise of part of its sovereign rights shall be applied in Slovenia in accordance with the legal regulation of these organisations. The legal regulations of these organisations may, inter alia, lay down rules regarding in what manner their acts and decisions enter into the legal orders of Member States and what effect they have in their legal orders.[4] Courts must apply EU law ex officio. This position is also upheld in the case law of the Court of Justice.[5] Regarding the case law of the Court of Justice and the OHIM, to which the complainant refers, the provisions of Regulation No. 40/94, which regulate absolute grounds for refusing the registration of a trade mark, apply, thus the provisions of substantive law. In the complainant's case it is a legal situation (the refusal of a trade mark application) which had arisen before the implementation of the Regulation in the territory of the Republic of Slovenia (before 1 May 2004, when Slovenia became a Member State of the EU), as the

decision of the SIPO was issued on 18 September 2000, and on the date of Slovenia s accession to the EU it became final. However, the Constitutional Court did not have to consider the question whether the provisions of Regulation No. 40/94 must also be applied for situations and legal relations which had arisen before its implementation, or, in other words, whether the fact that Slovenia is a Member State of the EU and the legal consequences of such could influence the trade mark registration procedure, as alleged by the complainant. It is namely evident that neither the case in OHIM Decision No. 1189/2005, dated 31 March 2005, nor the case in the Judgment of the Court of Justice in the Baby- Dry case are substantially similar to the complainant's case. The OHIM decision concerns the question of the potential confusion in the public due to the alleged similarity between the prior registered German trade mark and subsequently registered Community trade mark, thus it concerns the problem of relative and not absolute grounds for the refusal of a trade mark. The Court of Justice in the Baby-Dry case recognised that the word combination Baby-Dry is capable of distinctiveness foremost because whilst each of the two words in the combination may form part of expressions used in everyday speech to designate the function of babies' nappies, their syntactically unusual juxtaposition is not a familiar expression in the English language, either for designating babies' nappies or for describing their essential characteristics and that it is a lexical invention. As follows from the challenged decisions, such circumstances were not established for the word combination rumene strani, which the complainant wanted to register. Due to the fact that the complainant failed to demonstrate that the cases to which it refers are the same, its right to the equal protection of rights determined in Article 22 of the Constitution could not be violated due to the departure from the uniform and established case law of the OHIM and the Court of Justice. 11. Regarding the complainant's allegations regarding the violation of Article 22 of the Constitution due to the fact that the court did not consider the supplementation of the appeal which was filed after the expiry of the time-limit for the appeal, the Constitutional Court has already adopted the standpoint in Decision No. Up-329/01, dated 16 May 2002 (Official Gazette RS, No. 49/02 and OdlUS XI/1, 119), that preclusive time-limits for filing legal remedies do indeed entail an interference with a party's right to make statements (Article 22 of the Constitution), as the court does not consider the substance of an application or the supplementation of an application filed on time which states reasons or facts which were not stated in the application filed on time, filed after the expiry of such time-limit. However, it is constitutionally admissible that such time-limits are determined, as they serve the purpose that clarity and certainty in mutual legal relations are ensured, and thereby such is in the interest of all parties in a legal relation, as well as in the interests of the institution of effective judicial protection (the first paragraph of Article 23 of the Constitution). The question of to what extent it could be disputable from the viewpoint of Community law whether preclusive time-limits were considered, proved to be legally irrelevant for a decision on the constitutional complaint in the discussed case. Although in one of the supplementations the complainant stated the fact that it had obtained the Community trade mark, it must be taken into consideration that in the discussed case this fact could not influence the decision on the refusal of the application for the national trade mark rumene strani. As the SIPO correctly emphasized in its reply to the constitutional complaint, the registration of a Community trade mark is based on a different state of the facts and a different legal basis. The complainant namely applied for a Community trade mark on 30 May 2003, when the Republic of Slovenia was not yet a Member State of the EU. This entails that the examination whether the conditions were fulfilled was limited to the circumstances which could have been an obstacle in the Member States of the EU at that time, whereas such circumstances could not have been taken into consideration in the Republic of Slovenia or in other EU candidate states (subsequently the new Member States). These were the subject of examination in the challenged decision by which the SIPO refused the registration of the trade mark. Furthermore, the membership of the Republic of Slovenia in the EU (the OHIM namely registered rumene strani as a Community trade mark on 20 September 2004) could not have influenced the registration procedure of the Community trade mark due to the

explicit provision of Regulation No. 40/94, which was supplemented[6] by Article 142a. It determines that the registration of a Community trade mark whose application is pending on the day of accession may not be refused on the basis of any of the absolute grounds for refusal listed in Article 7(1) if these grounds became applicable merely because of the accession of a new Member State. Therefore, the complainant's allegation regarding the alleged violation of Article 22 of the Constitution due to the absence of consideration of the supplementation of the appeal is not substantiated. 12. The complainant's allegation which refers to the question of which facts were taken into consideration in deciding on the registration of the trade mark, regarding the time of the filing for such, is also not substantiated. The Supreme Court namely explained to the complainant that the SIPO established that the reason determined in item 3 of the first paragraph of Article 19 of IPA existed already when the application for the trade mark was filed. Therefore, the existence of other absolute grounds for refusal, in particular the examination of to what extent the word combination rumene strani is already established, is not legally relevant. Thus, by allegedly erroneous consideration of the facts, which arose after the trade mark had been applied for, there was no interference with the complainant's right to the equal protection of rights determined in Article 22 of the Constitution. 13. The right of a party to proceedings to make statements, which follows from Article 22 of the Constitution, corresponds to the obligation of a court to learn of the allegations made by a party, to weigh their relevance, and, in the reasoning of a judgment, to take a position on the allegations which are of essential importance for a decision. Although the complainant claims otherwise, the Supreme Court did take the position on the complainant's allegations that there were double standards for deciding before national and before supranational authorities, namely in paragraph five of the challenged judgment of the Supreme Court. Therefore, the complainant's right determined in Article 22 of the Constitution was not violated. 14. The Constitutional Court reiterates that merely the allegation of the erroneous nature of the challenged judicial decision which interferes with the complainant's property does not in itself substantiate a violation of the right to private property (Article 33 in connection with Article 67 of the Constitution). There would be such violations only if the court, upon deciding, adopted a legal position which would not be acceptable from the viewpoint of the above-mentioned human rights. In the discussed case, in which the complainant's application for the trade mark was refused, this right could not have been violated. 15. The complainant did not substantiate the violation of the intellectual property rights determined in Article 60 of the Constitution, therefore, the Constitutional Court could not review such. 16. Due to the fact that the constitutional complaint is not substantiated, the Constitutional Court dismissed it. C. 17. The Constitutional Court reached this decision on the basis of the first paragraph of Article 59 of CCA, composed of: Jože Tratnik, President, and Judges Dr. Janez Čebulj, Dr. Zvonko Fišer, Dr. Franc Grad, mag. Marta Klampfer, and mag. Miroslav Mozetič. The decision was reached unanimously. Jože Tratnik President

Notes: [1] OJ L 011, 14 January 1994, p. 1, special Slovene edition, Chapter 17, Volume 1, pp. 146-180, last supplemented by Council Regulation No. 422/2004, OJ L 070, 9 March 2004, p. 1, special Slovene edition, Chapter 17, Volume 2, p. 3. [2] Judgment of 20 September 2001 in the case Procter & Gamble Company v The Office for Harmonisation in the Internal Market, C-383/99 P, Recueil, p. I-6251. [3] Constitutional Court Decision No. Up-188/02, dated 11 December 2003 (Official Gazette RS, No. 134/2003 and OdlUS XII, 112). [4] Final Draft of the Constitutional Act on the Amendment of Chapter I and Articles 47 and 68 of the Constitution of the Republic of Slovenia, including a statement of reasons, Bulletin of the National Assembly of the Republic of Slovenia 21/03, p. 13. [5] See, the Judgment of 14 December 1995 in the case Peterbroek, Van Campenhout & Cie SCS v Belgian State, C-312/93, Recueil, p. I-04599, and the Judgment of 14 December 1995 in the case Van Schijndel and van Veen v Stichting Pensioenfonds voor Fysiotherapeuten, C-430/93 and C-431/93, Recueil, p. I-04705. [6] Regulation No. 40/94 was supplemented by Annex II to the Act concerning the conditions of accession of the Czech Republic, the Republic of Estonia, the Republic of Cyprus, the Republic of Latvia, the Republic of Lithuania, the Republic of Hungary, the Republic of Malta, the Republic of Poland, the Republic of Slovenia, and the Slovak Republic and the adjustments to the Treaties on which the European Union is founded (OJ L 236 of 23 September 2003 and Official Gazette RS, No. 12/04, IT, No. 3/04 hereinafter referred to as Act concerning the conditions of accession), which in accordance with Article 60 of the Act concerning the conditions of accession forms, together with other Annexes, an integral part thereof. Type of procedure: ustavna pritožba Type of act: posamični akt Applicant: Telekom, d. d., Ljubljana Date of application: 9. 12. 2005 Date of Decision: 6. 12. 2007 Type of decision adopted: odločba Outcome of proceedings: zavrnitev Published: Official Gazette RS, No. 117/2007 and OdlUS XVI, 116

Document: AN03071