EUIPO Boards of Appeal adopt set of unified Rules of Procedure

With Decision 2020-1 of 2020 of the Presidium of the Boards of Appeal on The Rules of Procedure before the Boards of Appeal, the European Union Intellectual Property Office (EUIPO) has, for the first time in twenty years, agreed on a single comprehensive set of rules to be applied to all proceedings before the EUIPO Boards of Appeal.

The rules entered into force on 27 February 2020 and seek to increase transparency, consistency, and legal certainty for users of the appeal system, as well as streamlining the decision-making processes throughout the Boards of Appeal.

Recital 12 in the new Rules of Procedure sets out that, in order to ensure an effective, efficient and complete review of decisions of the Office by the Boards of Appeal, it is necessary to supplement the provisions applicable to appeal proceedings, and to specify the adjustments and adaptations needed for design appeal proceedings, with a view to ensuring consistent, transparent, thorough, timely, fair and equitable decision-taking.

According to Alicante News, Decision 2020-1 was conceived in close cooperation with stakeholders and user associations. The new Rules of Procedure compile and codify existing procedural practice of the Boards of Appeal as governed by:

• Regulation 2017/1001 (EU Trade Mark Regulation),
• Regulation 2018/625 (Commission Delegated Regulation supplementing the EU Trade Mark Regulation),
• Regulation 2018/625 (Commission Implementing Regulation laying down detailed rules for implementing certain provisions of the EU Trade Mark Regulation),
• Regulation 6/2002 (Community Designs Regulation), and
• Regulation 2245/2002 (Commission Regulation Implementing the Community Designs Regulation).

Adding to the latter instruments, the Rules of Procedure also codify general principles of EU law, including equal treatment and sound administration, as interpreted by the General Court and by the Court of Justice of the European Union.

Furthermore, still according to Alicante News, one of the main purposes of the Rules of Procedure is to clarify the extent to which the procedural rules on trade mark proceedings are applied by analogy to design appeals after the legal reform of 2017. Consequently, the rules specify the adjustments and adaptations needed for design appeal proceedings, with a view to increasing legal certainty.

Structure of the Rules of Procedure

The new Rules of Procedure consist of 69 articles divided into 9 chapters. As indicate above, they lay down provisions relating not only to trade mark proceedings but also Community design proceedings, unless otherwise specifically provided for. The structure of the new Rules of Procedure may in brief be summarised as follows:

Chapter 1 sets out the general provisions. This includes principles such that the parties of the proceedings shall have access to the documents and items submitted, notification of decision by the Boards of Appeal, and calculation and extension of time limits.

Chapter 2 provides provisions relating to written proceedings at the EUIPO. It includes provisions relating to the appeal fees, renewal certificates, as well as first and second round of written submissions.

Chapter 3 details rules concerning oral proceedings.

Chapter 4 relates to alternative dispute resolution.

Chapter 5 governs discontinuance and other special types of proceedings. By way of example, this includes applications for revocations and declarations of invalidity, which can be withdrawn at any time before the Boards decision has become final. The chapter also includes provisions relating to expedited examinations of appeal applications and suspension of marks and/or designs.

Chapter 6 concerns evidence.

Chapter 7 details – among other things – the treatment of information marked confidential, publication of decision, requests for removal of personal data, and correction of errors.

Chapter 8 details provisions relating to costs.

Finally, chapter 9 sets out the final provisions relating to the entry into force of the Rules.

Comment

The rationale supporting the decision is certainly to be applauded, and hopefully practitioners and parties to proceedings will benefit from this new framework.

By having the Rules of Procedure into a single document, the parties to an appeal at the EUIPO will have a clearer and more detailed picture of the process, thereby increasing predictability and the ability to make informed decisions while keeping clients and interested stakeholders abreast of what to expect.