OHIM Board of Appeal decision annulled for failure to give reasons

In Société anonyme des eaux minérales d’Evian v Office for Harmonization in the Internal Market (OHIM) (T-407/05), the Court of First Instance (CFI) has annulled a decision of the Board of Appeal of OHIM on the grounds that the board had failed to give reasons for its decision not to take into account the translation of the registration certificate of an international trademark.

On September 21 1998 A Racke GmbH & Co OHG filed an application for the registration of the figurative mark REVIAN'S as a Community trademark for goods in Class 33 of the Nice Classification. Société anonyme des eaux minérales d’Evian opposed the application based, among other things, on its international trademark EVIAN in Class 33. The notice of opposition was accompanied by:

• a copy of the international trademark in its original language (French); and
  
  
• a translation into the language of the proceedings (German) of the list of goods in Class 32 and 33 to which the opposition related.

The opposition division allowed Evian a period of four months to submit any additional facts, evidence and arguments that it considered necessary to substantiate its opposition, highlighting that the documents must be supplied in the language of the opposition proceedings or be accompanied by translation. Evian failed to submit the translation of the registration certificate within the time limit.

On November 23 2001 the opposition division rejected the opposition as unfounded, holding that the existence and legal validity of the earlier trademark had not been established (Decision 2754/2001). The Board of Appeal dismissed Evian's appeal against the decision of the opposition division. Evian appealed to the CFI.

The CFI held that a party has no unconditional right to have facts and evidence submitted out of time taken into consideration by OHIM. Article 74(2) of the Community Trademark Regulation (40/94), which states that OHIM "may" decide to disregard facts and evidence, grants the latter a wide discretion to decide whether to take such information into account. OHIM is nevertheless required to give reasons for its decision in that regard.

In the present case, the CFI found that the Board of Appeal had limited itself to concluding that the opposition division had been right not to take into consideration the translations on account of their late submission. However, it was not apparent from the case-file that the board had exercised the discretion granted to it by Article 74(2) of the regulation to determine whether it should take account of the document in question, or at least it did not appear to have given reasons for its decision on that point. Therefore, the CFI found that the board had infringed Article 74(2) and annulled its decision.

Angela Heffermann, Sattler & Schanda Rechtsanwälte, Vienna