GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS PART A GENERAL RULES SECTION 2 GENERAL PRINCIPLES TO BE RESPECTED IN PROCEEDINGS Guidelines for Examination in the Office, Part A, General Rules Page 1
Table of Contents 1 Adequate Reasoning... 3 2 The Right to Be Heard... 3 2.1 Examination by the Office of its own motion... 3 2.2 Examination limited to adduced facts and evidence... 4 3 General Principles of EU Law... 4 4 Means of Taking Evidence... 4 4.1 Written evidence... 5 4.2 Oral evidence... 5 4.3 Commissioning of experts... 6 4.4 Inspections... 7 4.5 Affidavits... 7 4.6 Costs of taking evidence... 7 5 Oral Proceedings... 8 5.1 Opening of oral proceedings... 8 5.2 Course of the oral proceedings... 8 6 Minutes of Evidence and of Oral Proceedings... 9 7 Decisions... 9 7.1 Contents... 9 7.2 Apportionment of costs... 9 Guidelines for Examination in the Office, Part A, General Rules Page 2
1 Adequate Reasoning Articles 75-78, 85 CTMR Decisions of the Office will be in writing and shall state the reasons on which they are based. That duty has two purposes, namely to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision (see judgment of 12/07/2012, T-389/11 Guddy, not published in the ECR, para. 16 and the case-law cited). However, the Office does not infringe the duty to state reasons when it does not respond to all the arguments raised by the parties. It is sufficient that it sets out the facts and the legal considerations of fundamental importance in the context of the decision. (See judgment of 16/05/2012, T-580/10, Kindertraum, and judgment of 10/10/2012, T-569/10, Bimbo Doughnuts ). 2 The Right to Be Heard In all proceedings before the Office, the parties will always have the opportunity to state their positions and to put forward their grounds of defence. The latter will be, in principle, submitted in writing. Proceedings before the Office will primarily be in writing. Decisions may be only based on reasons on which the parties have had an opportunity to present their comments. However, the Office is not obliged to give a legal opinion before the issue of a decision (see judgment of 08/03/2012, T-298/10, Biodanza ). The extent of the examination by the Office will vary, primarily, according to whether the proceedings are ex parte or inter partes. However, this examination may also vary depending on whether the proceedings relate to the examination of absolute grounds for refusal or relative grounds for refusal of registration or invalidity. 2.1 Examination by the Office of its own motion The Office will examine the facts of its own motion: in ex parte proceedings, in particular the examination of a CTM application prior to publication. Guidelines for Examination in the Office, Part A, General Rules Page 3
2.2 Examination limited to adduced facts and evidence The Office is restricted in its examination to the facts, evidence and arguments submitted by the parties: in inter partes proceedings (oppositions, cancellations). If documents are filed or allegations are made after expiry of a time limit set by the Office, these will in principle be considered late and the document will not be taken into account. Even if no time limit was fixed by the Office, statements of parties may be refused by the Office as belated pursuant to Article 76(2) CTMR. This will in particular be done if admitting the belated statement or evidence would delay the taking of the decision or would require hearing the other party, or where no valid reason for the late submission of the evidence is given. The above restrictions concerning statements made in due time do not apply to legal questions. Legal issues will be taken into account by the Office irrespective of whether pleaded by the parties, for example in the assessment of similarity between signs or goods, made on the basis of the comparison of the two trade mark applications/registrations. The above restrictions also do not apply to changing circumstances arising in the course of the proceedings. For example, if during opposition proceedings the earlier right on which the opposition was based lapses (e.g. it is not renewed or is declared invalid), this will always be taken into account. 3 General Principles of EU Law The general principles of EU Law such as equal treatment and sound administration must be respected by the Office (see judgment of 24/01/2012, T-260/08, Visual Map ). The principle of equal treatment must however be applied in a manner that is consistent with the principle of legality according to which a person may not rely, in support of its claim, on an unlawful act committed in another procedure (see judgment of 02/05/2012, T-435/11, UniversalPHOLED ). 4 Means of Taking Evidence Article 78 CTMR Rule 57 CTMIR In any proceedings before the Office, evidence may be taken. The means for taking evidence are listed in Article 78 CTMR and Rule 57 CTMIR, although that list is not exhaustive. The means of evidence are as follows: hearing the parties requests for information the production of documents and items of evidence Guidelines for Examination in the Office, Part A, General Rules Page 4
hearing witnesses opinions by experts statements in writing sworn or affirmed or having a similar effect under the law of the State in which they are drawn up inspection. Some of these means will be more frequently employed, such as requests for information, statements in writing and, in particular, the submission of documents and items of evidence. The others, such as hearing of the parties, witnesses or experts, inspections, etc., will be used only exceptionally. The Office will be the sole judge of the expediency of employing these means. It will do so only when it considers them necessary for the examination of the file. A decision to refuse a request for the taking of evidence will not be subject to a separate appeal and can only be appealed together with the final decision. The procedure followed by the Office varies in accordance with the nature of the proposed means of taking evidence. 4.1 Written evidence When taking evidence, the Office will confine itself to written evidence in most cases. This is the least costly, simplest and most flexible means of taking evidence. In this regard, the Office will give preference to the submission of documents and items of evidence. However, other possible written means of taking evidence include not only a request for information or statements in writing sworn or affirmed or having a similar effect under the law of the State in which they are drawn up, but also opinions by experts which may be confined solely to the submission of a written report. The Regulation makes no provision for any special procedure or formality. Therefore, the Office s general rules of procedure apply. In particular, any information, documents or items of evidence submitted by one party will be communicated to the other parties as soon as possible, and the Office may allow the other parties a time limit of, in principle, two months to reply thereto. The Office will base its decision only on reasons on which both sides have had an opportunity to submit observations. 4.2 Oral evidence This refers to evidence taken in oral proceedings, such as the hearing of oral evidence of parties, witnesses or experts. Reminder: only in exceptional cases will the Office decide to hear oral evidence, in particular because of the cumbersome nature of the procedure, which is liable to protract the proceedings, and because of its cost which, eventually, has to be borne by the unsuccessful party in inter partes proceedings, or in some cases by both parties. Guidelines for Examination in the Office, Part A, General Rules Page 5
Where the Office considers it necessary to hear the oral evidence of parties, of witnesses or of experts, it will take a decision stating the means by which it intends to obtain evidence (in the present case, a hearing), the relevant facts to be proven and the date of hearing. If the oral evidence has been requested by one of the parties, the decision will likewise impose upon that party a period, in principle one month, within which that party must make known the names and addresses of the witnesses and experts whom it wishes to be heard. Further to its prior decision, the Office will summon the parties, witnesses or experts. The period of notice to appear will be at least one month, unless the persons concerned agree to a shorter period. The summons will indicate, in addition to the date of the hearing and the matters of fact to which the hearing will relate, the names of the parties to the proceedings and particulars of the costs, if any, which the witnesses or experts may be entitled to have reimbursed by the Office. If the Office invites a party to give evidence orally, it will so inform the other parties, who may in that case intervene. Similarly, when the Office summons an expert or a witness for a hearing, it will so inform the parties who may in that case be present and put questions to the person giving evidence. 4.3 Commissioning of experts The use of the means of taking evidence considered in this section is exceptional, for the abovementioned reasons. More especially, opinions by experts or inspections will be employed only as a very last resort to avoid the substantial costs and protraction of the proceedings caused thereby. It is the Office who decides whether an expert s opinion is commissioned, and who is appointed as expert. The Office does not maintain a list or special committee of experts, because of the exceptional nature of this means of taking evidence. The terms of reference of the expert include: a precise description of their task the time limit laid down for their report the names of the parties to the proceedings particulars of any costs which may be reimbursed by the Office. On receipt of the expert s report, the Office will submit copies thereof to the parties. If the Office considers the report sufficient, and if the parties accept this form of report, it will in principle be used only in its written form. The submission of an oral report or the hearing of oral evidence given by the expert will, therefore, be an option to be employed at the Office s discretion. The parties have the option of objecting to an expert on grounds of incompetence, because of a conflict of interest, because the expert has previously been involved in the dispute or because the expert is suspected of partiality. No refusal may be based on the nationality of the appointed expert. If parties object to the expert, the Office will Guidelines for Examination in the Office, Part A, General Rules Page 6
rule on the objection. The grounds which may be cited for objecting to an expert are the same as those on which objection may be made to an examiner or to a member of a Board of Appeal pursuant to Article 137 CTMR. 4.4 Inspections Only in very exceptional circumstances will the Office consider it necessary to carry out an inspection in situ. In that case, it will take a decision, which will be motivated as any other decision of the Office, stating the means by which it intends to obtain evidence (in the present case, an inspection), the relevant facts to be proven and the date of the inspection. The date fixed for the inspection will be such as to allow the party concerned sufficient time to prepare for it. 4.5 Affidavits Sworn or affirmed statements in writing are equally admissible as evidence, if provided by a party. However, the credibility of these statements must be considered, taking into account whether the information is correct, accurate, whether it comes from an independent source and/or is supported by written information (e.g. statements in which the issuing person confirms that the records of their company contain certain information). The abuse of Article 78(1)(f) CTMR by parties as a means of selftestifying is unacceptable. In order for a statement to be considered sworn or affirmed, it must be established that making a false statement would, under the law of the Member State in which the document was drawn up, be considered a criminal offence. It is precisely the potential criminal sanction that will induce people to tell the truth, and will provide the Office with the assurance that the alleged facts are true. Where that is not the case, the document can only be considered as any other written document or statement without any convincing evidential value. 4.6 Costs of taking evidence The taking of evidence by the Office may be made conditional upon a deposit by the party who has requested it. The sum will be fixed by the Office by reference to an estimate of the costs. The witnesses and experts summoned or heard by the Office will be entitled to reimbursement of expenses for travel and subsistence. An advance may be granted to them. The witnesses and experts will also be entitled, respectively, to compensation for loss of earnings and fees for their work. The amounts reimbursed and the advances for expenses are determined by the President of the Office and are published in the Official Journal of the Office. For details, see Decision No EX-99-1 as amended by Decision No EX-03-2 of 20/1/2003. When the Office, on its own initiative, adopts means of taking evidence which require oral evidence from witnesses or experts, liability for the costs will lie with the Office. Guidelines for Examination in the Office, Part A, General Rules Page 7
However, if the giving of oral evidence has been requested by a party then liability will lie with that party, subject to the decision on apportionment of costs in inter partes proceedings. 5 Oral Proceedings Article 77 CTMR Article 77 CTMR provides that the Office may hold oral proceedings. Any unofficial contacts such as telephone conversations will not be considered to constitute oral proceedings within the meaning of Article 77 CTMR. The Office will hold oral proceedings only when it considers them absolutely necessary. This will be at the Office s discretion. In 99% of cases the possibility for the parties to present their observations in writing will be sufficient, and it will be hard to see what additional material could be submitted at a hearing without breaching the principle that facts and evidence must be adduced in due time and within the time limits set in the written procedure. 5.1 Opening of oral proceedings Where the Office has decided to hold oral proceedings and to summon the parties, the period of notice may not be less than one month unless the parties agree to a shorter period. Since the purpose of any oral proceedings is to clarify all points remaining to be settled before the final decision is taken, it is appropriate that the Office, in its summons, should draw the parties attention to the points which in its opinion need to be discussed in order for the decision to be taken. In so far as the Office considers that certain matters require it, and to facilitate the hearing, it may invite the parties to submit written observations or to submit evidence prior to the oral hearing. The period fixed by the Office for the receipt of such observations will take account of the fact that these must reach the Office within a reasonable period of time to enable them to be forwarded to the other parties. The parties may likewise submit evidence in support of their arguments on their own initiative. However, if such evidence should have been produced at an earlier stage of the proceedings, the Office will be the sole judge of the admissibility of these items of evidence, which complies with the principle of hearing both parties where appropriate. 5.2 Course of the oral proceedings Oral proceedings before the examiners and the Opposition Division will not be public. Before the Cancellation Division, oral proceedings, including delivery of the decision, will, as a matter of principle, be public. If a party who has been duly summoned to oral proceedings does not appear before the Office, the proceedings may continue without them. Guidelines for Examination in the Office, Part A, General Rules Page 8
At the end of the oral proceedings the Office should allow the parties to present their final pleadings. 6 Minutes of Evidence and of Oral Proceedings Minutes of the taking of evidence and of oral proceedings will be confined to the essential elements. In particular, they will not contain the verbatim statements made, nor will they be submitted for approval. However, any statements of experts or witnesses will be recorded so that at further instances the exact statements made can be verified. The parties will receive a copy of the minutes (but not of the recorded statements). 7 Decisions 7.1 Contents Article 75 CTMR Rule 55 CTMIR Decisions of the Office shall be reasoned to such an extent that their legality can be assessed at the appeal stage or before the General Court or Court of Justice. The decision will cover the relevant point raised by the parties. In particular, if there are different outcomes for some goods and services of the CTM application or registration at issue, the decision will make clear which of the goods and services are refused and which are not. The name or names of the person(s) who took the decision will appear at the end of the decision (Rule 55 CTMIR) At the end of the decision, a notice will be added about the availability of an appeal. Failure to include such an availability notice does not affect the legality of the decision and does not affect the time limit for filing an appeal. 7.2 Apportionment of costs Article 82(5) and Article 85 CTMR Rules 51 and 94 CTMIR In ex parte proceedings, there is no decision on costs, nor any apportionment of costs. Fees paid to the Office will not be reimbursed (exceptions: Rule 51 CTMIR, refund of the appeal fee in certain cases, as well as Article 82(5) CTMR, refund of the fee for further processing if further processing is not granted). Decisions on costs, or the fixing of costs, are limited to opposition and cancellation proceedings (including the ensuing appeal proceedings or proceedings before the GC and CJ). Costs comprise the costs incurred by the parties to the proceedings, chiefly Guidelines for Examination in the Office, Part A, General Rules Page 9
representation costs (although subject to relatively low ceilings) as well as costs for taking part in oral hearings. Costs also comprise the opposition or cancellation fee paid by the opponent or third party. Apportionment of costs means that the Office will decide whether and to what extent the parties have to reimburse each other for those amounts. It does not involve the relationship to the Office (fees paid, internal costs of the Office). Therefore, if a decision is given in inter partes proceedings, the Office will decide on the apportionment of costs. The losing party will bear the fees and costs incurred by the other party which are essential to the proceedings. If both parties fail on one or more heads or to the extent that equity so requires, the Office may determine a different apportionment of costs. Where the amount of costs is limited to representation costs incurred by the other party (or possibly to the reimbursement of the opposition or cancellation fee), the decision will contain the fixing of the costs to be paid by the losing parties. No proof that those costs were actually incurred is needed for this purpose. Representation costs means only costs for professional representatives within the meaning of Article 93 CTMR, not for employees (even of another company with economic connections). This part of the decision is a title that can be executed in simplified proceedings, in all Member States of the EU. In cases of a withdrawal or a surrender of the contested CTM application or CTM or a withdrawal of the opposition or the request for cancellation, the Office will not decide on the substance of the case but it will normally take a decision on costs. The party who terminates the proceedings will bear the fees and costs incurred by the other party. When the case is closed for other reasons the Office will fix the costs at its discretion. In no case will the decision on costs be based on the hypothetical assumptions of who might have won the proceedings if a decision on substance had become necessary. Furthermore, within one month of the date of notification fixing the amount of the costs, the party concerned may submit a request for review. This request must state the reasons on which it is based and must be accompanied by the corresponding fee (Article 2(30) CTMFR). Guidelines for Examination in the Office, Part A, General Rules Page 10