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The refusal by the European Union Intellectual Property Office to reimburse the fee of a successful appeal against a decision not to register a trade mark.

Dear Ms X,

On 20 February 2020, you submitted a complaint to the European Ombudsman against the European Union Intellectual Property Office (EUIPO) for not reimbursing the fee of your successful appeal against its decision not to register a trade mark.

The EUIPO refused to reimburse the appeal fee of EUR 720 because it considered that the conditions for the reimbursement were not met. According to the relevant provision, the appeal fee shall be reimbursed “where the Board of Appeal considers such reimbursement equitable by reason of a substantial procedural violation[1]. EUIPO considered that there had been no “substantial procedural violation”.

After a careful analysis of all the information you provided with your complaint, we regret to inform you that the Ombudsman finds no maladministration by the EUIPO.

You argued that the decision not to register the trade mark was arbitrary and unreasoned and that the EUIPO had departed from previous decisions on similar requests for registration without any justification. You consider that this constitutes a “substantial procedural violation”. You also referred to a recent judgement of the EU General Court[2] to support your arguments.

A substantial procedural violation is an objective deficiency in the procedure, that is, a failure to respect the rules of procedure which affects the outcome of the case.[3]

When the EUIPO refuses to register a trade mark, it must give reasons for its decision by setting out the facts that it considers proven and by indicating the ground for refusal with reference to the relevant provision in the EU Trade Mark Regulation.[4] According to case-law,[5] such statement of reasons is sufficient to allow interested parties to know the justification for the measure and thus to enable them to protect their rights, as well as to allow the appeal bodies to review the legality of the decision.

You received a statement of reasons that satisfies the requirements described above. The EUIPO informed you that the trade mark could not be registered based on article 7, paragraph 1, letters b) of the EU Trade Mark Regulation because the image of the person in your trade mark was not a distinctive sign that would allow to identify the business origin of the products and services requested.

The Board of Appeal accepted your argument that the EUIPO had registered similar type of trade marks in the past and disagreed with the substantive assessment of your trade mark referred to above (the application of article 7, paragraph 1, letters b) of the EU Trade Mark Regulation). The Board of Appeal found that your trade mark should not have been denied registration. The appeal thus recognised a mistake of law, that is, a substantive error, not a procedural error.

In the recent judgement that you refer to, the General Court also found a mistake of law.[6]

Accordingly, the EUIPO was correct in considering that a reimbursement of the appeal fee was not justified.

Based on the above, the Ombudsman has closed the case.[7]

We understand that you may be disappointed by this decision, but we hope that the above explanations are nevertheless helpful.

Yours sincerely,

 

Tina Nilsson
Head of the Case-handling Unit

Strasbourg, 05/10/2020

 

[1] Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark (’the EU Trade Mark Delegation Regulation’’), Article 33(d).

[2] Judgment of the General Court of 18 December 2019, T-624/18, Gres de Aragón v EUIPO.

[3] Case Law of the Boards of Appeal of EPO, Case T 0012/03 of 3 February 2004, par. 4.2.

[4] Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark.

[5] Judgment of the General Court of 9 July 2008, Paul Reber GmbH & Co. KG v European Union Intellectual Property Office, Case T-304/06, par. 43-46.

[6] T-624/18, Gres de Aragón v EUIPO, par. 54.

[7] Full information on the procedure and rights pertaining to complaints can be found at https://www.ombudsman.europa.eu/en/document/70707