Guidance on deadline for restitutio in integrum claims issued

In Classen Holding KG v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance has issued guidance on the application of the principle of restitutio in integrum (meaning 'restitution to the original position') in Article 78 of the Community Trademark Regulation.

Article 78(1) of the regulation provides that any party:

"to proceedings before the [OHIM] who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit vis-à-vis the [OHIM] shall, upon application, have his rights re-established if the non-observance in question has the direct consequence, by virtue of the provisions of this regulation, of causing the loss of any right or means of redress."

Article 78(2) then sets out that the application must be:

"filed in writing within two months from the removal of the cause of non-compliance with the time limit. The omitted act must be completed within this period. The application shall only be admissible within the year immediately following the expiry of the unobserved time limit."

The issue before the Court of First Instance in this case was the time limit for applying for restitutio in integrum under Article 78. Classen Holding had filed its statement of grounds of appeal in an opposition action two days after the expiry of the four-month appeal deadline. The OHIM noted that the appeal had been filed out of time and Classen then filed an application for restitutio in integrum, submitting that it had failed to observe the time limit because its representative had been ill and the representative's internal office procedures put in place to cover such circumstances had failed.

An OHIM Board of Appeal rejected the application for restitutio in integrum on the basis that the cause of non-compliance was the illness of Classen's representative, and that this cause was removed when the representative returned to work on February 10 2000 and signed the statement of grounds. The application thus had to be filed within two months of that date (ie, by April 10 2000). However, the application was not filed until May 30 2000 and therefore could not be accepted. Classen appealed.

The Court of First Instance upheld the Board of Appeal's decision. It stated that it was necessary to determine at what point in time the alleged cause of non-compliance was removed and affirmed the Board of Appeal's decision that this cause ended when the representative returned to work on February 10 2000. Consequently, the two-month time limit started to run from that date.

The OHIM's and the Court of First Instance's interpretation of Article 78(2) indicates that grace periods for applications for restitutio in integrum will be strictly applied. In the case at hand, however, even if this strict approach had not been followed, Classen may have still fallen foul of the test in Article 78(1) (ie, the "all due care" requirement). In its decision in the Marron Blanco Case (Case J 41/92), the European Patent Office held that to comply with the "all due care" provision in Article 122 of the European Patent Convention (the patent equivalent of Article 78 of the Community Trademark Regulation), a professional representative who runs a one person office would normally be required to make appropriate arrangements so that, in the case of absence through illness, he or she would be able to observe the relevant time limits.

Patricia McGovern and Aine Matthews, LK Shields Solicitors, Dublin