Mere payment of appeal fee insufficient to constitute required notice

European Union
In Axis AB v Office for Harmonisation in the Internal Market (OHIM) (Case T-70/08, September 9 2010), the General Court has annulled a decision of the Second Board of Appeal of OHIM in which the latter had held that there was no likelihood of confusion between the marks ETRAX and ETRA I+D.

On June 17 2004 Axis AB filed an application for the registration of the word mark ETRAX as a Community trademark in Classes 9 and 42 of the Nice Classification. The application was opposed by Etra Investigación y Desarrollo SA under Article 8(1)(b) of the Community Trademark Regulation (40/94) on the grounds that there was a likelihood of confusion with its earlier Spanish registrations for the figurative mark ETRA I+D in Classes 9 and 42.

The Opposition Division of OHIM rejected the opposition in its entirety on December 11 2006, holding that there was no likelihood of confusion between the marks.

An undated notice of appeal was received by OHIM on February 21 2007 - that is, after the appeal deadline of February 12 2007 had expired. By decision of November 27 2007, the Second Board of Appeal of OHIM upheld the appeal, refusing the application in its entirety. The board held that, although the undated notice of appeal had been received by OHIM after the appeal deadline of February 12 2007:

"the payment of the appeal fee by bank transfer '[had] fulfilled the role of the appeal notice for admissibility purposes', since it had been made in time and contained the details required under Rule 48(1) of Commission Regulation... 2868/95... implementing Regulation... 40/94."

Axis appealed to the General Court, alleging infringement of Rules 49(1) and (2) of Regulation 2868/95 and Article 8(1)(b) of Regulation 40/94.

With regard to the infringement of Rules 49(1) and (2), Axis submitted that the Board of Appeal had erred in finding that the appeal was admissible because the bank transfer note in settlement of the appeal fee was in Spanish, contrary to Rule 48(2) of Regulation 2868/95, which provides that the notice of appeal must be filed in the language of the proceedings in which the decision under appeal was taken (which, in the present case, was English).

OHIM acknowledged that the Board of Appeal had infringed Rules 49(1) and (2) of Regulation 2868/95. However, it maintained that the error was insufficient to warrant annulment of the board's decision, because this "procedural irregularity" could not have had a "decisive effect" on the admissibility of the appeal. OHIM also claimed that the appeal was admissible on the grounds that, on February 21 2007, Etra had submitted a fax transmission report showing that a notice of appeal satisfying all the requirements under Rule 48 of Regulation 2868/95 had been sent on February 8 2007. However, OHIM could not trace having received that fax.

Rule 49(1) states that, if an appeal does not comply with Article 59 of Regulation 40/94 (now Article 60 of the Community Trademark Regulation (207/2009)), the Board of Appeal must reject it as inadmissible, unless those deficiencies have been remedied within two months of the date of notification. Under Article 59 of Regulation 40/94, the notice of appeal must be filed in writing at OHIM within two months of the date of notification of the decision under appeal, and is to be deemed to have been filed only when the fee for appeal has been paid.

The General Court stated that the mere payment of the fee was insufficient to constitute the required notice. The General Court further held that the Board of Appeal had failed to take into consideration the fact that the actual appeal notice had not been filed when it ruled that the appeal was admissible based only on the payment of the appeal fee.

Moreover, the General Court ruled that OHIM was not entitled to claim that the appeal should be considered admissible because of the fax transmission. The Board of Appeal’s finding that the appeal was admissible was based solely on the bank transfer note. The board did not in any way base its findings on the fax transmission report. It was not until the hearing before the General Court that OHIM requested that the court either dismiss the action or alter the board's decision on the basis of the fax transmission. The General Court held that this submission should be dismissed as inadmissible, stating as follows:

"Although Article 134(3) of the Rules of Procedure of the General Court provides that ‘[a]n intervener… may, in his response…, seek an order annulling or altering the decision of the Board of Appeal on a point not raised in the application’, it follows from that provision - by dint of a contrario reasoning - that OHIM is not entitled, for its part, to seek such a form of order." Vedial v OHIM (Case C-106/03 P)

According to the General Court, it was for the Board of Appeal to assess whether - and, if so, to what extent - the fax transmission, on which OHIM had relied erroneously in its arguments, was likely to have an effect on the admissibility of appeal. OHIM was not allowed to add this ground to its case before the General Court.
 
The case was decided solely based on infringement of Rule 49(1) - the other grounds were not considered. The decision demonstrates that OHIM cannot introduce before the General Court evidence that the Board of Appeal had failed to consider when making its decision. Although OHIM's argument with regard to the fax transmission was likely be correct, procedural rules precluded the General Court from revising the erroneous decision of the Board of Appeal.
 
Ville Patja, Berggren Oy Ab, Helsinki

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