Trademark registration in the European Union
Recent decision of the Board of Appeal in the European Union
In the recent decision of the Second Board of Appeal in the European Union in Case R 259/2016-2, Applicant or Appellant Apple Inc. appealed to the European Union trademark (EUTM) application. By an application filed on 4 August 2014, Apple Inc. claimed priority of trade mark filed in Trinidad and Tobago with a filing date of 4 February 2014, sought to register trademark in the European Union, the word mark HEALTHKIT for goods and services in Nice Classes 9, 10, 14 and 44.
After collecting all evidences about distinctiveness, the examiner took the contested decision entirely refusing the trade mark applied to register trademark in the EU. The applicant filed an appeal against the contested decision, requesting that the decision be entirely set aside. The Registry acknowledged receipt of the applicant’s letter that its request for reclassification will be dealt with by the Board in its decision. The applicant was reminded of the deadline to file a statement of grounds. The Registry notified the applicant that a written statement setting out the grounds of appeal should have been filed within four months after the date of notification of the contested decision and that it appeared that a written statement had not been filed. The applicant was informed that the appeal was likely to be deemed inadmissible and it was invited to file comments.
Instead of filing a statement of grounds the applicant requested a reclassification. When the Office acknowledged receipt it confirmed that the request will be dealt with by the Board of Appeal in its decision. The applicant indicated that it also spoke to an official of the Registry. The applicant trusted that this confirmed its position and sought the Office confirmation that its request for reclassification will be considered by the Board of Appeal as opposed to the Board dismissing the appeal for the reason that the applicant did not file a formal statement of grounds. The Registry acknowledged receipt of the applicant’s letter and informed it that the case would be forwarded to the Second Board of Appeal and that the Board would take a decision on the admissibility of the appeal.
Reasoning of the Board of Appeal in the European Union
A written statement setting out the grounds of appeal must be filed within four months from the date of notification of the contested decision. The submission of the statement of grounds within earlier mentioned time-limit is a condition for the appeal’s admissibility. The simple filing of the appeal form is, in itself, insufficient to be accepted as a statement of grounds of appeal.
For a clear identification of the reasons supporting the appeal, it is necessary that the appellant submits a statement of grounds that contains a clear indication of the relevant submissions in fact and in law giving explanation why the contested decision was wrong. Such identification cannot be done by the Board by way of deduction. It must be possible to understand from the appellant’s statement of grounds why he/she seeks the annulment or amendment of the contested decision. The reclassification request is in itself merely a procedural motion and not a statement giving any reasons for the annulment of the contested decision.
Since the applicant failed to submit a statement of grounds of appeal, in the legal sense, within the statutory time-limit, the appeal does not comply with the European Union trade mark Regulation. Furthermore, it has to be added that there is no basis for deciding on the admissibility of the reclassification where there is no admissible appeal in the first place.
Decision of the Board of Appeal in the European Union
On those grounds, the Board of Appeal dismissed the appeal as inadmissible.
Should you have any questions of possibility to register or appeal trademark in the European Union, please do not hesitate to contact us info@gencs.eu.
T: +371 67 240 090
F: +371 67 240 091