- The owner of a Community trademark that had expired due to failure to renew filed an appeal against the notice informing him of that expiration.
- Since the petitioner did not file a statement of grounds within the prescribed time limit, the appeal was dismissed as inadmissible.
- Furthermore, since the notification was not a decision closing the proceedings, the appeal did not comply with the provisions of Article 66(2) of Regulation 2017/1001.
In its decision of August 26, 2024, in Case R 656/2024-4, the Fourth Board of Appeal of EUIPO dismissed an appeal filed by the owner of a Community trademark registration that had expired due to failure to renew, challenging the notice informing the owner of said expiration.
The Board of Appeal found that, since the proprietor of the EUTM did not file a statement of grounds within the relevant time limit, the appeal did not comply with Article 68 of Regulation 2017/1001 and must be dismissed as inadmissible pursuant to Article 23(1)(d) of Delegated Regulation 2018/625. Furthermore, since the notification by which EUIPO informed the proprietor of the EUTM, in accordance with Article 53(8) of Regulation 2017/1001, that the registration of the EUTM would expire on July 23, 2023 (i.e., the notification that is the subject of the appeal) was not a decision terminating the proceedings, the appeal did not comply with Article 66(2) of Regulation 2017/1001 and should have been dismissed as inadmissible pursuant to Article 23(1)(b) of Delegated Regulation 2018/625, even if the statement of grounds for the appeal had been filed within the time limit (which was not the case).
Facts
The figurative mark TAJ (EUTM No. 012007258) was filed on July 23, 2013, and was granted on December 3, 2013.
The proprietor did not renew the registration by the due date (July 23, 2023) or within the six-month grace period provided for in Article 53(3) of Regulation 2017/1001. By notice dated February 2, 2024, and sent on February 3, 2024, the EUIPO informed the EUTM proprietor, in accordance with Article 53(8) of Regulation 2017/1001, that the EUTM registration had expired on July 23, 2023 (“the contested notification”). Furthermore, the EUTM proprietor was informed that, if he considered this conclusion to be incorrect, he could request a decision on the matter in writing within two months of the notification. It was noted that such a decision would only be issued if the EUIPO did not share that view; otherwise, the conclusion would be amended and the EUTM proprietor would be informed.
On March 26, 2024, the owner of the EUTM filed an appeal requesting the complete annulment of the contested notice and submitted a statement indicating that, due to the withdrawal of his representative, he was unaware of the notice of expiration. The statement concluded by noting that a brief setting forth the grounds for the appeal would be filed shortly.
On June 5, 2024, the Registry of the Boards of Appeal notified the holder of the EUTM of an irregularity regarding the notice of appeal. It stated that, pursuant to Article 66(2) of Regulation 2017/1001, an appeal may only be filed against a decision that concludes the proceedings and that, therefore, the appeal was likely to be dismissed as inadmissible. The EUTM proprietor was invited to submit observations and to provide the Board with any supporting evidence regarding those conclusions within one month of receiving the notification.
The statement of grounds for the appeal was received on July 3, 2024, well after the four-month period from the date of notification of the decision provided for in Article 68(1) of Regulation 2017/1001.
Decision
The Board of Appeals declared the appeal inadmissible:
- The head of the EUTM did not file a written statement of reasons within the applicable time limit (four months after the contested decision); and
- The contested notice is not a decision that concludes the proceedings and, therefore, is not subject to appeal.
Comment
The decision issued by the Board of Appeal is logical and unavoidable for both procedural and substantive reasons. The appellant did not file its arguments within the four-month deadline. Even if it had done so, the appeal would still be inadmissible, given that EUIPO issued the notice that is the subject of the appeal for purely informational purposes, since the expiration of the EUTM registration due to failure to renew occurs by operation of law. The cancellation will take effect on the day following the expiration date of the existing registration. In other words, the revocation of the EUTM registration did not occur as a result of the EUIPO’s notification, but had already taken place previously, as the 10-year term of validity and the subsequent six-month grace period had elapsed without the holder of the EUTM registration applying for renewal.
José Ignacio San Martín, Associate Partner at ELZABURU
Originally published on WTR on October 18, 2024.