General Court: How to avoid mistakes when correcting mistakes

The EU legislator was aware that nobody is perfect and did not only allow to appeal the decisions of the European Union Intellectual Property Office (‘EUIPO’) and its Boards of Appeal (‘BoA’) but also provided mechanisms to self-correct their decisions. Art. 102(1) EUTMR deals with the “Correction of errors and manifest oversights” and reads:

[The EUIPO/BoA] shall correct any linguistic errors or errors of transcription and manifest oversights in its decisions, or technical errors attributable to it in registering an EU trade mark or in publishing the registration of its own motion or at the request of a party.

Art. 103(1) EUTMR is entitled “Revocation of decisions” and stipulates:

Where [the EUIPO/BoA] has made an entry in the Register or taken a decision which contains an obvious error attributable to [the EUIPO/BoA], it shall ensure that the entry is cancelled or the decision is revoked.

The General Court dealt with the distinction and prerequisites of these articles in a recent decision that is worth a closer look:

Background

On 18 July 2018, West End Drinks Ltd filed an application for registration of EU trade mark no. 017931478 for the following sign:

The application covered ‘gin; vodka’ in class 33.

Pernod Ricard filed an opposition on the basis of EU trade mark SOHO, registered since 2006 for ‘alcoholic beverages (except beers), namely liqueurs and prepared wine cocktails’ in Class 33, and French trade mark SOHO, registered since 1987 for ‘spirits, liqueurs and notably cocktails and cocktail bases’ in Class 33.

Pernod Ricard invoked a likelihood of confusion (Art. 8(1)(b) EUTMR).

The EUIPO’s Opposition Division upheld the opposition. The BoA upheld the appeal and rejected the opposition. Pernod Ricard filed an appeal against this decision with the General Court (pending under case no. T‑563/23, hereinafter ‘First Decision’).

Subsequently, the BoA rendered a further decision in which it corrected various errors in the First Decision (hereinafter ‘Second Decision’). The Board relied on Art. 102 EUTMR. Pernod Ricard also filed an appeal against the Second Decision with the General Court. This Second Decision is the subject of the judgment discussed below.

The General Court's Decision

The General Court upheld the appeal in part because the BoA infringed Art. 102 EUTMR (T-13/24).

I. Violation of Art. 102 EUTMR

1. The principles of correction

The judges held that, for reasons of legal certainty and the importance of the binding nature of a final decision, the rules for subsequent corrections must be interpreted strictly, applied in exceptional circumstances and limited to obvious formal mistakes.

The judges explained the principles governing the correction procedure and the revocation procedure:

a. The correction procedure

The correction procedure under Art. 102 EUTMR does not involve the annulment of the corrected decision, but merely results in the correction of the errors by means of a corrigendum decision. Corrections in this sense are limited to obvious formal mistakes, which affect the form of the decision but not its scope and substance.

This is true of errors which (1) are so obvious that no wording other than the corrected wording could have been intended, (2) do not justify invalidating or revoking the decision and (3) do not require hearing the parties.

The correction procedure does not apply if a new assessment of the case becomes necessary.

The judges summarized:

[A]n error identified in a decision may be corrected, pursuant to [Art. 102 EUTMR], where it constitutes an incongruous element in a decision which is otherwise consistent and unambiguous, that is to say where it is clear that the error is the result of an oversight or a slip of the pen which must be manifestly corrected in the proposed manner because no wording other than that resulting from the correction could have been envisaged.

b. Revocation procedure

By contrast, the revocation procedure under Art. 103 EUTMR results in the annulment of the erroneous decision and involves a return to the stage of the procedure at which the case before the EUIPO or the BoA was before the adoption of that decision. This means that the operative part of the decision cannot be maintained without a new analysis of the case by the EUIPO or the BoA.

This is true, for instance, of errors affecting the cost award, the right to be heard and the obligation to state reasons.

2. Application to the case at hand

On that basis, the Court reviewed the corrections made by the BoA:

a. The Board was entitled to delete a paragraph which repeated the content of another paragraph identically. This was considered an obvious clerical error.

b. The BoA deleted a paragraph in which it found that the relevant public for the assessment of the likelihood of confusion was the public in Spain and France. This reference was linked to the Board’s assessment of genuine use of the earlier mark. Pernod Ricard mainly submitted evidence of use for Spain and France.

In a different paragraph, the Board held that the relevant public was that of the EU.

The Court found that the BoA was not entitled to delete the paragraph referring to the French and Spanish public since a causal link to the assessment of the genuine could not be excluded. This mistake of the BoA was not so obvious that no other text than the corrected one could be envisaged.

c. The Board’s first decision contained contradictory statements on the level of attention of the relevant public. In one paragraph it was deemed to be average, in another average to high. The BoA corrected this error in the second decision by replacing the words “average to high” with “average”.

The judges held that the error was not obvious because it could not be excluded that the BoA drew conclusions from the finding of an average to high level of attention of the public.

d. The BoA also made contradictory findings on the level of the similarity of signs when assessing the similarity and when determining the likelihood of confusion. The Board corrected the paragraph determining the likelihood of confusion.

The Court considered this to be impermissible. It found that the statements of the BoA on the level of similarity of the signs were not so unambiguous that no other text than that of the corrected version could be envisaged.

II. Violation of Art. 41 CFR

Pernod Ricard also argued that the BoA infringed its right to good administration under Art. 41(1) of the EU Charter of Fundamental Rights (‘CFR’).

The Court found that the BoA was not precluded from taking account of Pernod Ricard’s appeal to the General Court concerning the First Decision and correct errors of that decision in accordance with Art. 102 EUTMR.

Further, the BoA was not required to hear Pernod Ricard prior to correcting the decision (to the extent that the correction was justified). The judges found that the right to be heard (enshrined in Art. 41(2)(a) CFR) applies even where the applicable legislation does not provide for hearing the parties. However, the right to be heard can only be invoked when a decision affects a person adversely. The correction of an obvious mistake (in the present case the deletion of a repeated paragraph) did not affect Pernod Ricard negatively.

Comment

The judgment shows that the BoA may correct a decision even if an appeal against this decision is filed. If the decision is revoked by virtue of Art. 103 EUTMR, an appeal becomes devoid of purpose (Art. 103(4) EUTMR).

If a decision that has been appealed is corrected by the BoA but the conditions of Art. 102 EUTMR were not fulfilled, both the substantive and the correction decision can be appealed. If the corrected decision is not appealed and becomes final, it may influence the chances of success of the appeal to the General Court concerning the substantive decision.