Amended version of decision should have been deemed to be legally non-existent

European Union
The rules regarding the relevant time limit to file an appeal against a decision of the Opposition Division of the Office for Harmonisation in the Internal Market (OHIM) appear to leave little room for interpretation. In dm-drogerie markt GmbH & Co KG v OHIM (Case T-36/09, September 9 2011), the General Court has clarified that such time limit should be observed even where the contested decision and OHIM’s corresponding notifications are tainted by blatant illegalities or irregularities.
The case under consideration concerned a decision of the Opposition Division upholding an opposition against the registration of the word mark DM for goods in Classes 9 and 16 of the Nice Classification based on an earlier Spanish figurative mark including the letters 'DM'. The decision of the Opposition Division contained contradictory remarks regarding the similarity of the relevant goods and the existence of a likelihood of confusion. It also contained an unfinished - and therefore incomprehensible - sentence. As the decision was notified to the parties on May 16 2007, the relevant period for filing a notice of appeal ended on July 16 2007.
On June 8 2007 the Opposition Division informed the parties that it intended to "revoke" its decision of May 16 2007 under Article 77(a) of the Community Trademark Regulation (40/94), due to an “obvious procedural error” (ie, failing to conduct a complete comparison of the goods and services). The parties were invited to file observations as to whether revocation was appropriate within a period of two months.
On November 26 2007 the parties received an amended version of the decision of May 16 2007. The letter accompanying the amended version, signed by a single member of the Opposition Division, stated that the decision had not been revoked under Article 77(a) (now Article 80 of the Community Trademark Regulation (207/2009), which applies where the decision contains an obvious procedural error attributable to OHIM, but had merely been modified under Rule 53 of Commission Regulation 2868/95 to correct an “obvious mistake”. It clarified that the amendment did not change the outcome of the decision.
By letter of December 19 2007, the parties were informed by the same single member of the Opposition Division that the decision contained in the letter of November 26 2007 was open to appeal within two months from the date of its notification.
The applicant filed an appeal against the Opposition Division’s decision on January 24 2008. However, the appeal was dismissed as inadmissible by the First Board of Appeal of OHIM on the grounds that it had been filed months after the relevant deadline. In this regard, the Board of Appeal noted that, although a corrigendum could in principle contain a decision open to appeal, this was not the case here because the outcome of the decision had not changed despite the differences in reasoning. Therefore, the decision had become final on July 16 2007, two months after the original flawed version was notified to the parties.
The General Court confirmed the arguments of the Board of Appeal insofar as the latter had found that OHIM's notification of June 8 2007 (inviting the parties to file their observations in connection with the announced revocation of the decision in the opposition) did not have suspensive effect in relation to the time limit for filing an appeal - particularly because the applicant could not be certain that OHIM would eventually revoke its decision.
The General Court also dismissed the applicant’s plea concerning its right to appeal the amended version of the decision notified on November 26 2007 on the basis of the principle of protection of legitimate expectations. In the court’s view, the applicant could not rely on the silence of the administration to entertain legitimate expectations as regards the interruption or suspension of the time limit to file a notice of appeal.

According to the General Court, the letter addressed to the parties on December 19 2007 (which expressly mentioned that the period within which to file an appeal started running on the date on which the amended version of the decision was notified to the parties) did not signify, in a “precise and unconditional manner”, that the parties could, at that time, file an appeal against the original version of the decision. In the court’s view, by failing to file a notice of appeal against the original version of the Opposition Division’s decision, even as a mere precaution, the applicant had not acted with the diligence required for relying on the principle of protection of legitimate expectations.

The General Court further held that the Opposition Division had exhausted its competence to rule on the opposition when issuing the original version of the decision on May 16 2007. Therefore, it had no legal basis to amend the decision in a way clearly exceeding the mere correction of obvious clerical mistakes. For these reasons, the court found that the amended version of the decision should have been deemed to be legally non-existent by the Board of Appeal, which had thus erred in law in failing to declare that the amended decision was null and void.

Although the General Court rejected the applicant’s pleas, OHIM was ordered to bear the costs incurred by the applicant on account of the gravity and blatancy of the illegalities and procedural errors made by the Opposition Division, which were also recognised by OHIM on its own motion.

Celia Sueiras, Garrigues Abogados, Madrid 

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