Brussels bypass for BOIP

The IPKat's friends Sandra Bauwens and Michaël Beck (from Belgian law firm Arnold + Siedsma) bring news of a decision of the Court of the Benelux on 26 June -- a long-awaited opinion in response to a reference for a preliminary ruling from the Brussels Court of Appeals. The case concerned the possibility of lodging an appeal against a decision of the Benelux Office for Intellectual Property (BOIP) in an opposition procedure against a Benelux trade mark. The authors explain:

"Article 2.17 of the Benelux Treaty on Intellectual Property (available in Dutch and French here) provides for a judicial appeal against opposition decisions of the BOIP, in which a party may request that a decision be vacated. Until now, it was unclear whether a court of appeal, having vacated an opposition decision in this way, would then have to remit the case to the BOIP, or decide by itself on the merits of the case.

Last week’s decision of the Benelux Court clarifies that the court of appeal is competent to decide the case, in close analogy to the procedure for appeals against refusal decisions. However, the court of appeal may in general only rely on the information on the basis of which the BOIP’s decision was made, or should have been made. It thus appears that it would no longer be useful to provide new facts and arguments during the appeal procedure. It also appears that an applicant (the defendant in opposition and appeal procedures) who has not filed any substantive response to an opposition in the procedure before the BOIP can no longer do so in appeal. This is particularly relevant where the BOIP has dismissed an opposition in spite of the absence of a substantive defence from the applicant.

The Court further opined that a decision by the BOIP not to continue the processing of an opposition, because of lack of prosecution by the opponent, is also a decision from which an appeal lies. There, however, the court of appeal should give the opponent an opportunity to make its case (which implies submitting new facts and arguments) according to the accepted rules of the adversarial procedure.

This decision opens up a new strategy for opponents: they could consider filing a notice of opposition without any facts or arguments, making their case for the first time in an appeal procedure that would be filed against the BOIP’s subsequent decision not to process the opposition, thus effectively bypassing the BOIP procedure. This bypass strategy, used effectively by opponents, would unnecessarily strain the judicial system. Would it not have been wiser to limit the possibility to appeal from non-processing decisions to cases where the opponent has a good-faith excuse for not prosecuting the original opposition?

The original decision of the Court is available in Dutch and French on the Court’s website here. The decision was also briefly discussed on the Boek9 blog here".

The IPKat thanks Michael and Sandra for giving his readers this insight into the strategic possibilities of bypassing the BOIP. Merpel says, this is rather reminiscent of the early jurisprudence of OHIM and the Court of First Instance relating to Community trade marks and the extent, if any, to which evidence and arguments could be introduced at a later stage, thus bypassing the nether regions of the system.