The EU court says a capital NO to filing late notices of appeals with trade marks

In a judgement dated Tuesday 15 January 2019, the EU court has dismissed the appeal of Computer Market (a computer retailer originally from Bulgaria) on the grounds of late filing.

An application was filed by Computer Market with the European Union Intellectual Property Office (‘EUIPO’) to register the figurative mark (a trademark which consist of a figure or a figure combined with a word).

The mark in question contained the words ‘Computer Market’ with the ‘o’ being replaced with an a round (‘power/ on’) that is mostly seen on computers and remote controls.  However, in April 2016, the EU court refused the registration application on the ground that the mark was ‘devoid of distinctive character’ (see article 7 (1)(b) of the European Union Trade Mark Regulation (‘EUTMR’)).

In October 2016, Computer Market made an appeal against the above decision. In response the Second Board of Appeal of the EUIPO stated that the appeal was inadmissible in 2017.

The board held that as Computer Market had received the EUIPO’s decision of refusal to register the trade mark on 28 May 2016, they had failed to adhere to the two-month deadline for filing an appeal (this had expired on 28 July 2016).

The court noted that Computer Market had submitted a communication with an attached ‘Notice of Appeal’ dated 26 July 2016. Nevertheless, the communication contained a ‘draft’ watermark. Consequently, this was taken to mean that the communication was a draft, it could not be submitted to the EUIPO. Additionally, the court identified that in August 2016, the EUIPO had informed Computer Market that it had received a payment from them dated 28 July 2016. As a result, the EUIPO asked Computer Market to confirm what the payment was in relation to. The court held this as evidence that confirmed that the EUIPO had not received a sufficient Notice of Appeal on 26 July 2016.

The court concluded that as there was no evidence to show that the EUIPO had received a sufficient Notice of Appeal on 26 July 2016, Computer Market’s appeal must be viewed as inadmissible.

The above court decision confirms that in order to be successful in filing an application for a Notice of Appeal, the applicant must adhere to the following:

1)Â Â Â Â Â file a Notice of Appeal within two months of the notice of refusal by the EUIPO and

2)     ensure that the Notice of Appeal does not state the word ‘draft’ as a watermark or is marked as a draft.

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