The Presidium of the Boards of Appeal published Decision 2020-1 in February, setting out rules of procedure in detail for the first time. This followed an extensive consultation process, in which MARQUES participated.  

The Rules comprise nine chapters covering: general provisions; written proceedings; oral proceedings; alternative dispute resolution; discontinuance and other special types of proceedings; evidence; decisions taken by the Boards; costs; and final provisions. In total, they cover 31 pages.

A draft of the Rules was published for consultation last year. Following discussions at the Annual Conference in Dublin in September, MARQUES created a Task Force comprising members of the Designs Team and the European Trade Mark Law and Practice Team.

The Task Force reviewed the draft thoroughly and submitted 13 pages of feedback in October. Its members were: Team members Paolo Andreottola, Karina Dimidjian-Lecompte, Riccardo Fecchio, Johannes Fuhrmann, Inga George, Oliver Nilgen, Peter Gustav Olson and Herwin Roerdink as well as MARQUES External Relations Officer Alessandra Romeo.

“It was very useful to have cooperation between the two Teams, and ensured that we could provide useful feedback within the relatively tight deadline,” says Herwin Roerdink.

Importance of the Rules

“The new Rules provide for a consolidated procedural framework for the Boards,” explains Inga George of the Designs Team, who co-chaired the Task Force together with Johannes Fuhrmann of the European Trade Mark Law and Practice Team. “It was necessary to replace the bits and pieces of rules which were previously in place and to reflect the legislative changes as introduced by the EUTMR and the EUTMDR respectively. So this is the first comprehensive set of rules for the Boards.”

“It is particularly useful to have some specific rules dealing with design appeals, as there are fewer design than trade mark cases and there are some differences between them,” adds Oliver Nilgen, who is a member of the Designs Team.

In its feedback, MARQUES highlighted a range of issues with the first draft, ranging from typographical errors and aspects that needed clarifying to more substantive points.

Johannes Fuhrmann says an important issue was to ensure the rules regarding confidentiality are not too burdensome for trade mark owners. In this, he says MARQUES was partly successful: “Article 6 of the Rules says you can claim complete confidentiality but the Boards may insist that you send another version of the document – which creates an extra burden.”

Another important issue concerns the deadline for requesting a second round of written submissions, which Article 22 of the Rules sets at two weeks. MARQUES would have preferred a two-month timeframe.

Trade mark practitioners should also note Article 45, concerning the re-opening of examination on absolute grounds. This provides that the Board can remit a case to first instance, but that if the first instance then refuses the mark any subsequent appeal goes to the same Board. “Hence, the Board that suggested the re-opening of the absolute grounds examination will have to deal with the exact case again. In other words, if you are not minded to bring this up to the General Court, it is not even worth filing an appeal,” says Johannes.

Impact of the Rules

As the Rules have only recently come into effect, it is yet to be seen how they will affect appeals in practice. Oliver Nilgen suggests that it is possible there may be more oral proceedings in future – so far there have been just three in trade mark cases, and none in design cases.

Johannes Fuhrmann adds that the new Rules try to further encourage mediation. Despite the Boards’ continued efforts to promote mediation, it has until now not been widely taken up, possibly because by the time of an appeal one party already has a favourable decision and is therefore not incentivised to mediate. Articles 34(1) and 44(6) of the Rules partly address that by providing that a suspension will be granted where parties submit a joint request for mediation before the statement of grounds of appeal is filed.

A step forward

The Task Force members agree that overall it is positive to have a clear and comprehensive set of Rules for the Boards of Appeal members, and the Rules should lead to greater consistency and predictability. This will be developed further by the ongoing CP12 project on evidence in trade mark appeal proceedings, on which MARQUES has submitted written comments.

Inga says that overall the benefit of MARQUES’ involvement is clear: “You can see that the MARQUES submission has been consulted. There are a number of changes where the wording was incorrect or imprecise, and in some cases they adopted exact wording we suggested. It was also good that we were able to indicate our support for the positive aspects of the proposals.”