Procedural rules on admissibility and examination of appeals clarified

European Union
In Claro SA v Office for Harmonization in the Internal Market (OHIM) (Case T-225/09, April 28 2010), the General Court has clarified procedural aspects relating to the admissibility and examination of appeals lodged before the boards of appeal of OHIM.
 
In 2006 Telet S/A, now trading as Claro SA, applied for the registration as a Community trademark (CTM) of a three-dimensional sign containing the word element 'claro' for goods and services in Classes 9 and 38 of the Nice Classification. Telefónica SA filed an opposition against the registration of the mark based on its earlier CTM CLARO, which is registered for, among other things, goods and services in Classes 9 and 38.
 
The Opposition Division of OHIM upheld Telefónica’s opposition on the grounds that there was a likelihood of confusion on the part of the public under Article 8(1)(b) of the Community Trademark Regulation (40/94).
 
Claro appealed the decision. It filed the required notice of appeal, stating that:
  • it objected to the decision of the Opposition Division in its entirety; and
  • it would file the corresponding written statement setting out the grounds of the appeal at a later stage.
However, Claro failed to file the written statement on time (ie, four months after the date of notification of the decision). OHIM informed Claro that, pursuant to Rule 49(1) of the Community Trademark Implementation Regulation (2868/95), its appeal could be declared inadmissible due to procedural deficiencies, and granted Claro an additional term to file its written statement. However, Claro failed to reply, and the Second Board of Appeal dismissed the appeal as inadmissible.
 
Claro appealed to the General Court, arguing as follows:
  • The filing of the written statement setting out the grounds of the appeal was not necessary in this case. Because Claro had stated in its notice of appeal that it contested the decision of the Opposition Division it its entirety, it was obvious that the appeal was based on the fact that the Opposition Division had misinterpreted Article 8(1)(b) of the Community Trademark Regulation - the only grounds on which the registration of the mark applied for had been refused.
  • The decision of the Opposition Division was contrary to the principle of functional continuity between the Opposition Division and the boards of appeal, according to which the boards are not obliged to base their decisions solely on the facts and points of law set forth during the appeal proceedings. Instead, the boards may - and should - take into account the proceedings before the Opposition Division. Thus, in the present case, the Second Board of Appeal should have resolved the appeal, instead of dismissing it as inadmissible.    
The General Court held that the Second Board of Appeal had not erred in finding that the appeal was inadmissible: the filing of the statement of the grounds of appeal within the relevant period is, without question, an indispensable requirement for the admissibility of an appeal. Article 59 of the Community Trademark Regulation clearly states that a written statement setting out the grounds of appeal must be filed.
 
The General Court further stated that this conclusion was not altered by the arguments put forward by Claro.
 
First, with regard to the argument that the filing of the written statement was not necessary, the court reminded Claro that it had announced, in its notice of appeal, that it would file this statement. The court further held that, even though the decision of the Opposition Division was based exclusively on Article 8(1)(b) of the regulation, and Claro appealed the entire decision, this did not automatically mean that the appeal was based only on an alleged misinterpretation of Article 8(1)(b). For instance, the appeal could also have been based on a wrongful application of the provision.
 
Moreover, according to the court, the mere allegation that the Opposition Division had misinterpreted the applicable provision could not be considered as a valid ground of appeal: it is necessary to state precisely what the alleged error is and what should be, according to the appellant, the correct interpretation. In the present case, such information could not be inferred from the notice of appeal submitted by Claro.
 
Further, the court clarified that, under Article 59 of the regulation, it is the appellant’s responsibility to explain the grounds of the appeal. The Board of Appeal does not have a  duty to deduce the grounds of appeal, as Claro seemed to suggest.
 
Second, the court refuted Claro's argument based on the principle of functional continuity. This principle, which is set forth in Article 62(1) of the regulation, establishes that the Board of Appeal should carry out a new examination of the points of law and facts brought forward before the Opposition Division, and resolve the appeal. However, under Article 61, such examination may take place only if the appeal is admissible. Therefore, if an appeal is not admissible, it should be dismissed without examining the merits of the case.
 
The appeal was thus dismissed.
 
Carlota Viola, Grau & Angulo, Barcelona

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