NEWS

The Enlargement of the European Community and its impact on Community Rights

F. Peter Müller,
Müller Schupfner, Munich
peter.mueller@propat.de
December 8, 2006

Abstract/Keywords:

1. Principle of “the applicant is the master of the procedure”
2. Best time for withdrawing an opposition
4. Decision of Opposition Division does not take effect
5. BELEBT GEIST UND KÖRPER
6. the applicant for a community trademark and the opponent are on equal footing in opposition proceedings

In decision R 200/2006-2 the Second Board of Appeal of the Office for Harmonization in the Internal Market decided that it is possible for the opponent to effectively withdraw the opposition after receipt of a negative decision of the Opposition Division if the period for filing a notice of appeal against the Opposition Division decision rejecting the opposition had not expired. Since the opposition has then effectively been withdrawn the decision of the Opposition Division does not take effect.

The decision of the Second Board of Appeal has been taken after the Opposition Division took a decision ruling on opposition B 538 563, thereby rejecting the opposition in its entirety because the opponent had not submitted proof of use of its earlier trademark. The opponent, represented by Müller Schupfner, Munich, Germany, communicated to the Office that it was withdrawing the opposition before the two months period for filing a notice of appeal expired, thereby informing the Office that the opponent considered the opposition proceedings to be terminated.

The Opposition Division, however, informed the opponent that the withdrawal of an opposition after the notification of a decision rejecting the opposition was not possible unless an appeal is filed against that decision. The opponent requested the Office to issue a formal decision which could be appealed and the Opposition Division took the requested decision thereby reasoning as follows:

1. The request to accept the withdrawal of the opposition is not taken into account.

2. The decision taken by the Opposition Division, which rejected the opposition, has become final, since no appeal has been filed within the appeal period.

3. This follows from Article 57(1) CTMR which explicitly states that an appeal filed against a decision of the Opposition Division has suspensive effect. This suspensive effect means that only appealed decisions are not considered to have become final; their effects are suspended. The decision is final from the moment of notification, if no appeal is filed. Therefore, the request for the withdrawal of the opposition cannot be taken into account, arriving as it does after the notification of the decision, and therefore it cannot change the outcome of the decision and its validity.

4. The Office is bound to the application of the Community Trade Mark Regulation, which is an independent and autonomous legislation. The Office cannot unconditionally apply practices followed by national trademark offices in Europe.

5. The Decision of the Second Board of Appeal of December 1, 2004 in Case R 348/2004-2 “BELEBT GEIST UND KÖRPER” is not applicable to the present situation. In that case, the applicant withdrew the application after a decision taken by the Board of Appeal which confirmed the rejection of the application. The relevant provision applicable here is Article 62(2) CTMR. This states that decisions of the Board of Appeal shall take effect only as from the date of expiry of the two months period to bring an action before the Court of Justice, referred to in Article 63(5). It is very clear from the wording of Article 62(2) CTMR that a decision of the Boards of Appeal has an automatic suspensive effect during the first two months from the date of notification of the decision. This Article cannot however be applied to a decision taken by the Opposition Division, as Article 57(1) CTMR is lex specialis and explicitly states the contrary, namely that the decision is final unless an appeal is filed.

6. As the Opposition Division had already rejected the opposition in the above mentioned decision, and no appeal had been filed, therefore, at the time of the receipt of the opponent’s request, no subject matter which could have been withdrawn existed any longer. In other words, as the opposition was no longer pending, there was nothing for the opponent to withdraw.

The opponent filed a Notice of Appeal against the contested decision and argued as follows:

1. Article 57(1) CTMR stipulates that an appeal has suspensive effect but it does not mention anything about whether a decision of the Opposition Division becomes final on the day of the notification or at the end of the appeal period of the two months. Since an appeal has suspensive effect, the contested decision is not final until the appeal period has expired or an appeal has been filed.

2. In support of its arguments the opponent referred to the “BELEBT GEIST UND KÖRPER” decision, cited above, which it considers applicable in the present situation. Furthermore, it refers inter alia to the Orders of the Court of First Instance of February 9, 2004 in Case T-120/03 Synopharm GmbH & Co. KG v OHIM (“DERMASYN”) [2004] ECR II-509 and of May 13, 2004 in Case T-193/99 WM. Wrigley Jr. Company v OHIM (“DOUBLEMINT”). The opponent also considers Article 43(6) CTMR and Article 108(6) CTMR, as well as Article 79 CTMR and Article 269(3) ZPO of the German Civil Procedure Law as indicators that a decision becomes final only after the expiry of the period to file an appeal.

3. Since the opposition was withdrawn before the Opposition Division decision became final the decision should be void because the opposition is non-existent ex-tunc.

4. According to Article 108(6) CTMR, the time period for filing a request for conversion of a Community trademark application begins at the day on which a decision to reject a Community trademark application becomes final and ends three months thereafter. If the decision becomes final at the date of notification – according to the opinion of the Opposition Division in the contested decision – then the stipulation in Article 108(6) CTMR would make no sense. In this case Article 108(6) should state that the time period for filing a request for conversion should start at the day of the decision or the day of the notification of the decision and not on the day on which the decision becomes final. Hence, the time period for filing a request for conversion of a Community trademark application starts two months after the day of notification of the decision to reject a Community trademark application and ends three months thereafter.

The Second Board of Appeal reasoned as follows:

1. First, it should be pointed out that an opposition may be withdrawn at any time. In the first sentence of Article 44(1) CTMR the legislature expressly provides for the withdrawal of Community trade mark applications only. However, given that, according to the scheme of the CTMR, the applicant for a community trademark and the opponent are on equal footing in opposition proceedings, it must be considered that that equality also extends to the possibility of withdrawing at any procedural stage (see to that effect, order of the Court of July 3, 2003 in case T-10/01 Lichtwer Pharma v OHIM (“Sedonium”) [2003] ECR II-2225, at paragraph 15).

2. With regard to appeal proceedings, pursuant to the second sentence of Article 57(1) CTMR, they have suspensive effect. The consequence of this provision is that an Office’s contested decision at first instance may not take legal effect until the period to lodge an appeal is over or the decision handed down by the Boards of Appeal has confirmed the decision. The suspensive effect may even be prolonged further if the applicant appeals the decision of the Boards to the Court of First instance. It follows that the decision to reject an opposition in its entirety cannot have the consequence of terminating the opposition proceedings until the two-month period to appeal is over. It is therefore possible to withdraw the opposition at any stage of the opposition or appeal procedure (see, by analogy, decision of the Grand Board of September 27, 2006 in Case R 331/2006-G – “Optima”, at paragraph 14 and the decisions cited in this paragraph).

3. The consequence of this for the present case is that, at the point in time when the opponent’s written submission containing the declaration of withdrawal of the opposition was received the Office, the period for filing a notice of appeal against the Opposition Division decision rejecting the opposition had not yet become effective, with the result that the suspensive effect of the ongoing period in which it was possible to file a notice of appeal remained in force. Thus, it was still possible for the opponent effectively to withdraw the opposition (see, by analogy, “Optima”, cited above, at paragraph 15).

Therefore, the Board annulled the contested decision, declared the decision of the Opposition Division does not take effect and declared the appeal and opposition proceedings closed. Of course, the community trademark application was allowed to proceed to registration.