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Tuesday, 15 March 2011

Germany not too far from Spain to cause prejudice, rules court

In bygone times, when Court of First Instance (now General Court) rulings on Community trade mark matters were not as plentiful as strawberries at Wimbledon, the IPKat used to report a good many of them.  Now, since these rulings are almost too many to be of any interest at all, he writes about them less frequently. Today's appeal, in Case T-50/09 Ifemy’s Holding GmbH v OHIM, Dada & Co. Kids Srl, however caught his eye.

An Italian company, Dada & Co. Kids, applied to register a figurative mark which included the words "Dada & Co. kids" in Class 25 for "clothing, footwear, headgear". Munich (Germany) based Ifemy opposed, citing an earlier German word mark, DADA, registered for the same goods in the same class. Dada asked for proof of genuine use of the earlier mark, so Ifemy sent a fax to OHIM in Alicante (Spain) supplying a list of documents on which it sought to rely for proof of genuine use of its mark. The fax arrived on time, but the 202-page bundle of documents didn't. The Opposition Division and the Board of Appeal, dismissing the opposition, agreed that the documents were inadmissible since they arrived late. Ifemy then appealed to the General Court, which upheld the decisions of the lower instances.

Readers might like the following argument:
"56 The applicant [ie Ifemy, who was applying to annul the Board's decision, not to be confused with Dada who was only the trade mark applicant ...] submits that OHIM’s practice discriminates, in breach of the Treaty, against persons established in the ‘further parts of Europe’, who have considerably less time than those established in Spain to send their letters to OHIM within the time-limits – usually two months – which it sets them. To be sure that a letter is received in time ...any person not resident close to where OHIM is located has to send the letter about two weeks before the time-limit expires, whereas persons resident in Spain can use the full time-limit. In addition, that practice is likely to encourage interested parties to move closer to OHIM’s location or to employ law firms close to it, which hinders the free flow of business.

57 OHIM’s argument that everyone is free to send their communications by fax is mistaken. First, some documents, in particular those in colour, cannot be sent by fax [Not true, says the IPKat, who once had a colour fax: they ran to the none-too-popular ITU-T30e standard.  Further, adds Merpel, they generally can be sent -- the problem is that they usually can't be received]. Second, as in the present case, some communications are too large to be able to be sent by fax without malfunction [the IPKat's experience was that the same applied to small and medium-sized documents, which is why he no longer has a fax].

58 The applicant states that there are a number of alternatives to OHIM’s practice that are based on objective and non-discriminatory criteria. For example, OHIM could allow communications by email, as the General Court does [What! In the 21st century!], or indeed take into account the date on which a fax is sent and accept proof of genuine use sent within the time-limit set, but received after its has expired. ...

62 Rule 22(2) of Regulation No 2868/95 provides:

‘Where the opposing party has to furnish proof of use or show that there are proper reasons for non-use, [OHIM] shall invite him to provide the proof required within such period as it shall specify. If the opposing party does not provide such proof before the time limit expires, [OHIM] shall reject the opposition.’

63 It follows from the wording of that provision that the time-limit which it lays down is a strict time-limit which means that OHIM cannot take account of evidence that is submitted late ...

64 Such a time-limit, like the periods for lodging complaints and bringing actions, is a matter of public policy and cannot be left to the discretion of the parties or the Court, which must ascertain, of its own motion if need be, whether it has been complied with. That time-limit meets the requirement of legal certainty and the need to avoid any discrimination or arbitrary treatment in the administration of justice ...

65 ... Rule 22(2) of Regulation No 2868/95 must be interpreted as meaning that proof is ‘furnished’ not when it is sent to OHIM but when it reaches it.

66 First, that interpretation is borne out, in terms of their literal meaning, by the use of the two verbs ‘to furnish’ and ‘to provide’ proof to OHIM in the wording of Rule 22(2) of Regulation No 2868/95. Both of those verbs convey the idea of moving or transferring the proof to the place at which OHIM is located, the emphasis thus being placed on the result of the action rather than on its origin. ...

70 ... that interpretation also meets the requirement to avoid any discrimination or arbitrary treatment in the administration of justice, in that it makes possible the same methods of calculating time-limits for all the parties, irrespective of their residence or nationality.

71 It is settled case-law that the principle of equal treatment or non‑discrimination requires that comparable situations must not be treated differently and that different situations must not be treated in the same way unless such treatment is objectively justified ...

72 In the present case, it is indeed true, as OHIM acknowledges, that parties who are established or resident a long way from Alicante (Spain) may be disadvantaged compared to other parties, established or resident close to that city, when they communicate with OHIM by post.

73 However, the mere fact that the time it takes to deliver a letter by post varies according to the country of dispatch does not allow the conclusion to be drawn that the taking into account of the date of receipt of the proof provided under Rule 22(2) of Regulation No 2868/95 discriminates between the persons concerned according to the country in which they are located when that proof is sent ...

On the whole, the postmen in Spain are okay --
but once they start on the old flamenco,
there's no stopping them
75 ... the fact that the time it takes to deliver a letter by post to Alicante varies according to the country of dispatch is to a certain extent offset by the opportunity for any person concerned, when appropriate under the circumstances, of requesting an extension of the period, in accordance with Rule 71(1) of Regulation No 2868/95. In addition, Rule 72(4) of that regulation provides that, if an exceptional occurrence such as a natural disaster or strike interrupts or dislocates proper communication from the parties to the proceedings to OHIM or vice versa, the President of OHIM may determine that for parties to the proceedings having their residence or registered office in the State concerned or who have appointed a representative with a place of business in the State concerned, all time-limits that otherwise would expire on or after the date of commencement of such occurrence, as determined by him, are to extend until a date to be determined by him. ..."

The IPKat notes that Spain is a very popular destination for Germans; Ifemy could have flown the 202 pages of evidence themselves in just 2 hours and 35 minutes -- or they could have given the envelope to a passing tourist at the airport and slept soundly. Merpel says, a little unkindly, I thought the problem wasn't the time spent getting letters to Spain and indeed back again, but the length of time before the correspondence gets read and acted upon.  It's more than four and a quarter years since Ifemy lodged its opposition and it seems silly that so much time has been spent getting to this stage in the hostilities.

Worst postal service in the world: is it France, the United Kingdom or Ireland?

3 comments:

Matthew Taylor said...

"202 pages of evidence" might be better referred to in this context as "one lever arch binder", or "one DHL package". I have to wonder whether the <€20 saved by sending the package surface mail instead of courier was more or less than the amount spent on the appeal to the General Court!

Marty Schwimmer said...

Is overnight courier not available?

PAUL MAGRATH, Development Editor said...

Para 58 contains the other amazing fact (which you rightly highlight): why no email, or to be really up with it in the steam age, an FTP site to lodge docs.

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