Benelux court sheds light on opposition procedure

In Jtekt Corporation Limited v Jacobs Trading NV (Case A 2008/1/13, June 26 2009), the Benelux Court of Justice has, following a reference by the Brussels Court of Appeal, issued a much-awaited ruling clarifying the interpretation of the Benelux Convention on Intellectual Property with regard to certain procedural aspects of the opposition procedure before the Benelux Office for Intellectual Property (BOIP) - and, especially, the continuation of the procedure before the national courts.
With the introduction of the Benelux opposition procedure on January 1 2004, owners of Benelux trademarks were provided with an effective administrative tool to oppose the registration of conflicting marks. After a two-month cooling-off period during which the parties may settle the matter, the opposition procedure begins. The opponent has another two months to submit facts and arguments supporting its opposition. These facts and arguments are then passed on to the applicant, which is invited to respond within a period set by the BOIP. As part of its defence, the applicant may request that the opponent submit proof of use of the trademark that forms the basis of the opposition. Opposition decisions may be appealed within two months to the courts of appeal of Brussels, The Hague and Luxembourg (for more details on this procedure please see "Benelux completes implementation of trademark opposition procedure").
In the present case, Jtekt Corporation Limited had appealed a decision of the BOIP before the Brussels Court of Appeal. During the appeal proceedings, it emerged that certain procedural aspects of the case before the competent national courts needed to be clarified. Therefore, the Court of Appeal decided to stay the proceedings and referred various questions to the Benelux Court of Justice, which has jurisdiction to clarify rules of law that are common to the Benelux countries, with a view to promoting the equal application of these rules.

Among other things, the Court of Appeal asked the Benelux Court of Justice:
  • whether the subject matter of the proceedings in the case of an appeal against an opposition decision of the BOIP prevents the latter from being a party to the appeal proceedings; and
  • whether the Court of Appeal should, in an action for the annulment of the BOIP's decision, merely reconsider that decision without substituting its own decision for that of the BOIP, or whether it should rule on the opposition itself.
The first question was dictated by a comparison between the Benelux opposition procedure and the opposition procedure before the Office for Harmonization in the Internal Market (OHIM). In the latter procedure, OHIM is a party in an appeal from a decision of the Opposition Division. The Benelux Court of Justice followed Advocate General Leclercq’s opinion and ruled that the BOIP could not be a party to the proceedings before the Brussels Court of Appeal (nor could it be a party before the Belgian Supreme Court if the decision of the Court of Appeal were to be appealed). The Benelux Court of Justice stated that an appeal against an opposition decision of the BOIP is essentially a procedure between the parties which were involved in the opposition - that is, the applicant and the opponent.

The second question (which corresponds to the sixth question referred to the Benelux Court of Justice) resulted from a comparison between appeal proceedings following a refusal by the BOIP to register a trademark on absolute grounds, and appeal proceedings following an opposition decision of the BOIP.

A refusal to register a mark on absolute grounds may also be appealed before the Court of Appeal, which can decide on the merits of the case by taking into consideration all the evidence which has been - or should have been - taken into consideration by the BOIP. Therefore, an appeal involves a reconsideration of the decision taken by the BOIP. The issue was thus whether this also holds true for opposition proceedings.

The Benelux Court of Justice replied in the affirmative, holding that the Court of Appeal should decide on the merits and substitute its own decision for that of the BOIP - with the proviso that the Court of Appeal may take into consideration only the evidence on which the decision of the BOIP was based or should have been based.

The Benelux Court of Justice’s answer to this question may be considered as a welcome step in terms of the equal interpretation of the procedural rules under the Benelux Convention. However, although the Benelux opposition procedure has been much inspired by the EU procedure, there are still some dissimilarities. At the EU level, the boards of appeal may examine opposition decisions on the merits and have the possibility to either exercise any power within the competence of OHIM or remit the case to the Opposition Division for further prosecution. If the board decides to rule on the opposition itself, it must base its decision on the evidence that the parties have raised either during the proceedings before the Opposition Division or during the appeal procedure. Thus, the board may allow an appeal based on new facts or evidence, as long as these have been produced in a timely fashion.
Most of these dissimilarities are due to the fact that the opposition procedures before the BOIP and OHIM are organized differently. While the EU opposition procedure has four different levels (ie, the Opposition Division, the boards of appeal, the Court of First Instance and the European Court of Justice), the Benelux opposition procedure is characterized by only three levels - and the last two are pursued before the national courts, not before an administrative body.

Uschi De Neve, ALTIUS, Brussels

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