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Wednesday, 23 September 2009

... and you can't patent a trade mark either

A bit like mixing tea with your coffee, citing European Patent Office decisions in Community trade mark appeals is not to everyone's taste. This is what Evets, whose DANELECTRO and QWIK TUNE Community trade marks had lapsed, attempted in Joined Cases T‑20/08 and T‑21/08, Evets Corp. v Office for Harmonisation in the Internal Market.

Evets applied for restitutio in integrum, seeking re-establishment of the right to renew its registrations, claiming that its marks weren't renewed due to an error that had occurred owing to circumstances beyond its control and that of its representative (it being the fault of a third party who didn't have Evets' correct address in its database). OHIM's Trade Marks and Register Department said no -- it was Evets' fault for not taking all due care: Evets' representative knew the marks had to be renewed but took no action to check with Evets, the third party or OHIM whether the marks were being renewed. The Fourth Board of Appeal agreed, adding that the application for restitutio had been filed too late anyway. Today the Court of First Instance agreed, dismissing the action to annul the Board's decision.

The thing that caught the IPKat's eye was Evets' unsuccessful attempt to base its appeal on the too-late-to-apply point on European patent law:

"26 ... the applicant claims that, in view of the fact that there is an overall time‑limit of 12 months within which to bring restitutio in integrum proceedings, it was the legislature’s intention that the 2‑month time‑limit should not be calculated from the date on which the expiry was notified to the representative of the proprietor of the mark. Otherwise, the 12‑month time‑limit would be redundant and the 2‑month time‑limit for bringing restitutio in integrum proceedings would have sufficed. That approach has been adopted by the Boards of Appeal of the European Patent Office (EPO), and in so far as Article 78(2) of Regulation No 40/94 is identical in substance to Article 122(2) of the Convention on the Grant of European Patents ..., the same approach should be applied in the present case.

27 ... Article 122(2) of the Convention on the Grant of European Patents no longer contains any provision on time‑limits, but refers to Rule 136 of the Implementing Regulations to the Convention on the Grant of European Patents, .... The relevant provision is thus Rule 136(1) of those implementing regulations.

28 As regards the one-year time‑limit, suffice it to point out that Article 78(2) of Regulation No 40/94 does not concern solely applications for restitutio in integrum in cases of non‑submission of a request for renewal, but also concerns failure to observe the time‑limit where the non‑observance in question has the direct consequence, by virtue of the provisions of that regulation, of causing the loss of any right or means of redress. The non-observance, and in particular the removal of its cause, can take many forms and, therefore, the one‑year time‑limit is laid down as an absolute deadline. Thus, the applicant cannot claim that that time‑limit would become redundant if the two‑month time‑limit were to be calculated from the ‘chronological date’ (here, 21 and 23 November 2006) in question. In the event that the cause of non‑compliance is removed only one year after the expiry of the unobserved time-limit, the application for restitutio in integrum is no longer admissible. The two‑month period thus forms part of the one year period.

29 As regards the practice of the EPO’s Boards of Appeal, ... the Community trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it; it applies independently of any other system ....

30 Whilst identically or similarly worded provisions in the field of European intellectual property law must where possible be interpreted with consistent effect, the European Patent Convention is not a Community instrument, nor is the EPO a Community body. The case‑law of the Boards of Appeal within that office has no binding authority in Community law (Opinion of Advocate General Sharpston in Case C‑29/05 P OHIM v Kaul [2007] ECR I‑2213, point 40).

31 ... even if Article 78 of Regulation No 40/94 was drafted on the basis of a patent law model, there is nothing to suggest that the respective provisions must be interpreted identically, since the interests at issue in the two areas may differ. The legal context of patent law is different, and the provisions governing patents seek to regulate procedures different from those applicable in the area of trade marks ...

32 ... the decision of the Technical Board of Appeal of the EPO of 16 April 1985 (T 191/82, OJ EPO 7/1985, p. 189) ... in no way shows how the EPO would give a different interpretation .... In that case, it was found that, where the employee of an agent discovers that failure to observe a time-limit has led to the loss of a right, the cause of non‑compliance which is at the root of that failure – that is to say, the fact of not having realised that the time‑limit had not been observed – is deemed not to have been removed, as long as the agent concerned has not been personally informed of the situation, since it is for him to decide whether to file an application for restitutio in integrum and, if he decides to file such an application, to outline the grounds and circumstances which should be invoked before the EPO.

33 In the present case, the agent, that is to say the applicant’s representative, has not claimed that it was not personally informed of the situation on the dates of the notifications. Thus, the EPO decision in no way supports the applicant’s arguments. Moreover, the relationship between the representative and its employee cannot be treated in the same way as the relationship between a party which is represented and its representative".
The IPKat feels that this was always a non-starter and hopes it won't be raised again. Merpel says, one of the most popular books never to have been written is How to Succeed in Restitutio Applications before OHIM.

More on Danelectro here
Another Qwik Tune here

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