Clarified rules for OHIM Boards of Appeal implemented

European Union

About one year ago, the Community Trademark Regulation was amended by Council Regulation 422/2004 with regard to, among other things, the rules set out in Articles 130 and 131 on the organization and procedures of the Office for Harmonization in the Internal Market's (OHIM) Boards of Appeal. (For background discussion of the amending regulation, see Amendments to Community Trademark Regulation now in force.)

Regulation 422/2004 introduced:

  • a new post of president of the Boards of Appeal;

  • an enlarged Board of Appeal to which certain cases could be referred;

  • new rules allowing decisions of the Boards of Appeal to be taken by a single member under certain conditions; and

  • an authority responsible for laying down the rules and organizing the work of the boards.

The reason for these amendments was to give the boards the means to improve their operations as well as speeding up their decisions.

Commission Regulation 2082/2004, which entered into force in the EU member states on December 27 2004, now provides the details for the above changes. Accordingly, Commission Regulation 216/96 regarding the rules of procedure of the Boards of Appeal has been amended. The most important details set out by Regulation 2082/2004 are as follows:

  • The authority is named the Presidium of the Boards of Appeal and is chaired by the president.

  • The Presidium shall decide, based on objective criteria, the allocation of cases among the boards and shall designate the members of each board.

  • The Presidium shall also lay down rules necessary for the processing of cases brought before the boards as well as internal rules.

  • The enlarged board shall be named the Grand Board and shall comprise nine members including the president, who will chair it.

  • A board or the Presidium may refer a case to the Grand Board if it believes that this is justified by the legal complexity or importance of the case or by special circumstances, such as if Boards of Appeal have issued diverging decisions on a point of law raised by that case.

  • A board must refer a case to the Grand Board if it believes that it must deviate from an interpretation of the relevant legislation given in an earlier decision of the Grand Board.

  • The Presidium shall draw up an indicative list of the types of cases that the board may devolve to a single member, such as decisions closing the proceedings following agreement between the parties, and decisions on the award of costs and the admissibility of appeals.

  • The Presidium may also draw up a list of the types of cases that may not be devolved to a single member.

Fredrik Engfeldt, Jonas Gulliksson Advocates Ltd, Malmo

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