Scope of restitutio in integrum clarified

European Union
In Omnicare Inc v Office for Harmonization in the Internal Market (OHIM) (Case T-277/06, May 7 2009), the Court of First Instance (CFI) has annulled a decision of the Second Board of Appeal of OHIM, holding that applications for restitutio in integrum could be made with respect to an appeal against an opposition decision - in contrast to the opposition itself.
 
On June 26 1996, Omnicare Inc filed an application for the registration of OMNICARE as a Community trademark for goods and services in Classes 16 and 42 of the Nice Classification. The application was published for opposition purposes on November 15 1999 and opposed on February 3 2000 by Yamanouchi Pharma GmbH, whose rights were taken over by Astellas Pharma GmbH, intervener in the proceedings. 

On November 30 2005 the Opposition Division of OHIM rejected the application and ordered Omnicare to bear the costs of the proceedings. On March 23 2006 Omnicare filed a statement of grounds for an appeal, in which it referred to a notice of appeal that it claimed to have filed against the decision on January 30 2006. On March 27 2006 the Registry of the Boards of Appeal informed Omnicare that the notice of appeal had not been received. 

Omnicare filed a notice of appeal on March 30 2006, together with the statement of grounds for its appeal and an application for restitutio in integrum pursuant to Article 78 of the Community Trademark Regulation (40/94), having missed the statutory appeal deadline. 
 
Article 78(1) provides as follows:

"The applicant for or proprietor of a Community trademark or any other party to proceedings before [OHIM] which, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit vis-à-vis [OHIM] shall, upon application, have its rights re-established if the non-observance in question has the direct consequence, by virtue of the provisions of this regulation, of causing the loss of any right or means of redress."

The remainder of Article 78 clarifies the scope and applicability of restitutio in integrum. Article 78(5) (as amended) provides that "this article shall not be applicable to the time limits referred to in Paragraph 2 of this article, Articles 42(1) and (3) and Article 78a". Articles 42(1) and (3) concern the time limit for filing oppositions, clarifying the fact that restitutio in integrum is not available in opposition actions.
 
Article 78a(1) goes on to state that:

"an applicant for or proprietor of a Community trademark or any other party to proceedings before [OHIM] who has omitted to observe a time limit vis-à-vis [OHIM] may, upon request, obtain the continuation of proceedings."

Paragraph 2 goes on to list a series of provisions in the regulation to which "this article" shall not be applicable, including Article 59, which sets out the time limit for appeals. The Board of Appeal concluded that an application for restitutio in integrum was not admissible in cases where there was a failure to comply with the time limit in Article 59, including an appeal against an opposition decision, as in this instance.
 
Ruling against the Board of Appeal, the CFI found that the mandatory time limit for filing an opposition and the time limit for filing an appeal should not be put "on the same footing" with respect to restitutio in integrum. The CFI noted the absence of an express reference to Article 59 in the list of Article 78(5) exceptions and found no logical reason to deduce that appeals should be excluded. It distinguished the rules concerning exclusions for restitutio in integrum applications under Article 78(5) from reinstatement of proceedings under Article 78a(2). The CFI concluded that as Article 78(5) limits the procedural rights granted by that article, the provision must be interpreted strictly.

This decision puts an end to uncertainty with respect to applications for restitutio in integrum, although some will find it a bizarre interpretation of the legislation. Trademark owners may take comfort in the fact that while an opposition deadline cannot be extended pursuant to such an application, restitutio in integrum could be available where an opposition is appealed.

Inbali Iserles, Ashurst LLP, London

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