Rules on notification clarified

European Union
In K-Swiss Inc v Office for Harmonization in the Internal Market (OHIM) (Case C-144/07P, October 2 2008), the European Court of Justice (ECJ) has considered whether the delivery of a notice by express courier constituted notification.
K-Swiss Inc appealed to the ECJ after the Court of First Instance (CFI) dismissed its application to set aside a Board of Appeal’s decision on the grounds that the appeal had been filed out of time.
According to Article 63(5) of the Community Trademark Regulation (40/94), actions against decisions of the Board of Appeal must be brought before the CFI within two months of the date of notification of the decision of the Board of Appeal. This prescribed time period may be extended on account of distance by a single period of 10 days under Article 102(2) of the Rules of Procedure of the Court of First Instance.
The disputed decision of the Board of Appeal was delivered to K-Swiss by means of an express courier service. The delivery was made on October 28 2005. K-Swiss appealed on January 16 2006.
The ECJ found that what constitutes notification is detailed in an exhaustive list in Rule 61(2) of Commission Regulation 2868/95. Rule 61(2) states that notifications must be made by:
  • post;
  • hand delivery;
  • deposit in a post box at OHIM;
  • telecopier of other technical means; or
  • public notification.
Rule 62(1) and (3) provide as follows:
1. Decisions subject to a time limit for appeal […] shall be notified by registered letter with advice of delivery.
3. Where notification is effected by registered letter, whether or not with advice of delivery, this shall be deemed to be delivered to the addressee on the 10th day following that of its posting, unless the letter has failed to reach the addressee or has reached him at a later date. In the event of any dispute, it shall be for OHIM to establish that the letter has reached its destination or to establish the date on which it was delivered to the addressee.
 Rule 68 provides as follows:
where a document has reached the addressee, if OHIM is unable to prove that it has been duly notified, or if provisions relating to its notification have not been observed, the document shall be deemed to have been notified on the date established by OHIM as the date of receipt.
K-Swiss did not dispute that the express delivery was received on October 28 2005, but argued that this did not constitute notification by registered letter with advice of delivery.
The ECJ found that, under Rule 68, where the document has reached the addressee, OHIM may produce proof of the date of receipt if it is unable to prove that a document has been duly notified. The document will be deemed to have been notified on that date. Therefore, the notification was deemed to have been delivered on October 28 2005 and the period within which to commence proceedings expired on January 9 2006.
The appeal was dismissed on the grounds that it had been filed out of time and K-Swiss was ordered to pay costs.
Cheng Tan, McDermott Will & Emery UK LLP, London                                                  

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