ECJ: OHIM communications can also be decisions

The decision of the Court of Justice of the European Union (ECJ) in Jager & Polacek GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case C-402/11P, October 18 2012) highlights the importance of having clear regard for the rules governing procedures at OHIM. It also shows that OHIM is clearly an institution of the European Union, and that its acts should be treated as such.

The ECJ overturned decisions of the Board of Appeal of OHIM and the General Court, and established that a communication to the parties to an opposition, informing them that the opposition was admissible and setting the adversarial deadlines, constituted a decision which was subject to appeal under Article 57(1) of the Community Trademark Regulation (40/94). In the interests of legal certainty and legitimate interests, if such a decision was issued in error, under Article 77a of the regulation the request to withdraw the decision would have to be within six months of this communication.

On March 25 2008, the final day of the opposition period, the appellant in this case, Jager & Polacek GmbH, filed an opposition against a trademark application for REDTUBE in the name of the predecessors of RT Mediasolutions, on the basis of its earlier unregistered rights in the same mark, through use of the website www.redtube.com. OHIM informed Jager on April 10 2008 that the opposition had not been duly filed because it had received the opposition fee only on April 1 2008. It stated that, if the payment had been made within 10 days of the end of the opposition period, a surcharge of 10% of the opposition fee would be due by May 11 2008. On May 8 2008 Jager contacted OHIM indicating that it had become aware of the subject application only on March 25 2008, and requested the applicant to withdraw their trademark application. When this request was disregarded, Jager filed an opposition. As the Austrian banks had closed two hours prior to the time at which the opposition was filed, the payment to OHIM was not initiated until the next day. Moreover, Jager maintained that the period for payment was deemed to have been observed because the surcharge had been paid. 

On May 20 2008 OHIM sent a communication to RT Mediasolutions and Jager stating that the opposition was found to be admissible, notified them of the period within which the contentious part of the proceedings would commence, and set periods within which the applicant and opponent were to submit observations and evidence.

On September 10 2008 RT Mediasolutions submitted that the opposition fee had not been paid within the prescribed time limit and requested that OHIM treat the opposition as not having been duly filed.

On October 2 2008 OHIM sent a letter to Jager stating that the communication of May 20 2008 had been sent in error, as the opposition fee was deemed not to have been paid within the time limit and, therefore, the opposition was to be treated as not having been duly filed. OHIM also drew Jager’s attention to the fact that it was possible to request the adoption of a formal written decision, which Jager then requested.

On January 22 2009 OHIM’s Opposition Division issued a decision to the effect that the opposition was to be treated as not having been duly filed, as the requirement in Article 8(3) of the Implementing Regulation (2869/95) that a transfer order was to be given within the opposition period and that the surcharge was to be paid, was cumulative and not alternative.

On March 20 2009 Jager appealed against this decision to OHIM’s Board of Appeal, submitting that the Communication of May 20 2008 was a decision to the effect that the opposition was admissible. It submitted that the decision had not been properly revoked in accordance with the procedure set down in Article 77a of the Community Trademark Regulation, in that it had not been done within six months of the communication. 

The Board of Appeal and the General Court maintained that the communication of May 20 2008 was merely a letter and not a decision. Therefore, they deemed that Articles 77(a) and 57(a) of the Community Trademark Regulation were not applicable, and refused the appeal.

Jager lodged a single ground of appeal at the ECJ, alleging breach of Article 77a(1) and (2) of the regulation. It criticised the General Court on the following grounds:

• By refusing to consider the communication of May 20 2008 as a decision, the General Court had failed to afford Jager effective judicial protection.
• While it is open to OHIM to determine the admissibility of an opposition at any point in the proceedings, it can adopt a firm position on this at any time, such as by the communication of May 20 2008. One of the purposes of this communication was to decide upon the admissibility of the opposition, and the terms stating this were precise and unconditional. Furthermore, the communication did not state that OHIM may review the admissibility of the opposition. In accordance with effective judicial protection, the General Court should have concluded that, on the basis of its form and substance, the communication constituted a decision, as the finding of admissibility had been made by a competent responsible authority.
• The General Court had stated that the communication was not a decision, but clearly, under Rule 62 of the Implementing Regulation, a communication may contain a decision. 

OHIM maintained the General Court’s view that OHIM did not intend, by the communication of May 20 2008, to give a definite opinion on the admissibility of the opposition and, therefore, the communication did not constitute an “executive act” and had no legal effect on Jager’s situation. Consequently, the principle of effective judicial protection was not applicable.

The ECJ found that the Board of Appeal and the General Court were wrong in concluding that the communication at issue was not a decision because Rule 17 of the Implementing Regulation sets out the conditions for admissibility of an opposition. Where an opposition is found inadmissible, a decision terminating proceedings must be communicated to the applicant. This is subject to appeal under Article 57(1) of the Community Trademark Regulation.

Rule 18 of the Implementing Regulation states that, where an opposition is found admissible, this should be communicated to the parties, indicating that proceedings will commence from two months after receipt of the communication. The ECJ, looking at the term 'found admissible' in the different European languages, found that, apart from the German version, the term indicated that inter partes proceedings could not commence until the opposition was found admissible.

The ECJ also found that OHIM’s submission that, if they were to view the communication of May 20 2008 as a decision, it would compromise the rights of the defence, was flawed. This was because, if the communication was viewed as a decision, both parties would be able to appeal the decision on admissibility, at two points in proceedings, under Articles 57(1) and 77(a) of the Community Trademark Regulation:

• As the advocate general had pointed out, an opponent would not challenge a decision as to the admissibility of an opposition that they had filed;
• In addition to OHIM doing so itself, both parties could, within six months of communication of an unlawful decision, under Article 77(a) of the Community Trademark Regulation, submit to OHIM that an error had been made, and request the withdrawal of the decision in question.
• Alternatively, under Article 57(1) of the Community Trademark Regulation, either party could appeal the admissibility of the opposition to the Boards of Appeal after the conclusion of the opposition proceedings at the Opposition Division.

The ECJ found that, while the withdrawal of an erroneous decision, such as that of May 20 2008 was possible, it was necessary to do so within six months of the communication of that decision in the interests of legal certainty and legitimate expectations of the parties involved. 

As the decision was not formally revoked under the procedure of Article 77(a) of the Community Trademark Regulation within the prescribed six-month period, the Board of Appeal was wrong in holding that the Opposition Division was entitled to examine the admissibility of the opposition.

Amanda McDowall, Squire Sanders (UK) LLP, London