Late filing should not be penalized if fax received on time, court rules

European Union

In Joined Cases T 239/05, T 240/05, T 245/05 to T 247/05, T 255/05, T 274/05 to T 280/05, the European Court of First Instance (CFI) has upheld Atlas Copco's opposition to 13 figurative colour trademark applications filed by Black & Decker Corporation.

Atlas Copco's oppositions were based on earlier unregistered marks and other signs used in the course of trade within the meaning of Article 8(4) of the Community Trademark Regulation. Details identifying the earlier rights were provided in an attachment to the notice of opposition that was sent by fax prior to the opposition deadline. However, the original documents identifying the prior rights were not received until two days after the expiration of the opposition deadline.

The Office for Harmonization in the Internal Market's (OHIM) Opposition Division rejected the oppositions. It held that the faxed copy of the attachment was insufficient to identify clearly the earlier rights upon which the opposition was based. Further, it refused to take into account the colour representations received with the confirmation copy by mail as these documents were received after the opposition deadline.

On appeal, the board set aside the Opposition Division's decision. It considered that the earlier trademarks and signs on which the oppositions were based had been sufficiently identified in the attachment to the notice of opposition as sent by fax and also considered admissible the colour representations received with the confirmation copy.

The CFI upheld the Board of Appeal's decisions.

On the basis of Rule 80(2) of the Community Trademark Implementation Regulation, the court rejected Black & Decker's argument that OHIM could not take into consideration the colour representations of the earlier marks because they had been sent after the opposition deadline had expired. Indeed, according to the said provision:

"where a communication received by fax is incomplete or illegible, or where OHIM has reasonable doubts as to the accuracy of the transmission, OHIM is to inform the sender accordingly and is to invite [it], within a period to be specified by OHIM, to retransmit the original by fax or to submit the original."

The court held that it would be contrary to the objective of this rule for the sender of a document transmitted by fax that is incomplete and who consequently submits the originals without waiting for OHIM's request to be treated more severely than the sender of a document by fax who communicates the originals in response to OHIM's request.

Consequently, the court decided that the representations in colour should be deemed to have been received by OHIM before the expiry of the opposition period.

Cristina Bercial, Bureau DA Casalonga-Josse, Alicante

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