WELMAX case: time limits before the EUIPO and how to calculate them

Par Richard Milchior, september 10th, 2020

The General Court has issued its decision in Welmax + sp z o o spk v European Union Intellectual Property Office (EUIPO) (Case T‑305/19), which involved the time limits for an appeal before the Board of Appeal of the EUIPO.

Background

On 16 November 2015 Welmax obtained an international registration designating the European Union for the word mark WELMAX for products and services in Classes 5, 7, 10, 11, 20, 21, 24, 35 and 38. On 8 June 2017 Valmex Medical Imaging filed an opposition with regard to the products in Class 10 on the basis of a prior EU trademark.

On 4 July 2018 the opposition was upheld, and on July 11 a copy of the decision was transferred by the EUIPO to a postal service so that it would be notified to Welmax. On 20 July 2018 the postal service operator stated on its website that the registered letter had been delivered (“entregado”).

By email dated 30 August 2018, Welmax informed the EUIPO that it had not received the decision. The EUIPO replied by email dated 31 August and a copy was sent by post. Nevertheless, on 29 September Welmax informed the EUIPO that it still had not received the decision and requested it by email. This was done on 21 September “for information purposes”.

An appeal was filed by letter dated 19 October 2018, received on 26 October. On 26 November 2018 the EUIPO acknowledged receipt, but evoked some “irregularities”. On the same day a first letter was sent out, indicating that the appeal should have been filed before 21 September 2018 and could thus be inadmissible. The letter also requested Welmax to communicate any useful evidence within one month. Another letter dated the same day indicated that the appeal fees had not been paid before 21 September 2018 and that, consequently, it could be considered that no
appeal had been filed.

By letter dated 20 December 2018, Welmax argued that the effective date of the notification was the date of reception of the email (ie, 21 September 2018) and that its deadline to appeal was thus 20 November 2018. It argued that the appeal was therefore made on time and paid the fees on 21 December. These were received on 24 December. The EUIPO acknowledged receipt on 21 January 2019, but stated that it had received the reply to its letter on 8 January 2019 – after the 7 January deadline.

In a decision dated 22 March 2019, the Board of Appeal of the EUIPO rejected the appeal, considering that it had not been filed since the decision was notified on 20 July 2018 and the fees should have been paid before 20 September. Even if the notification had been made on 21 September 2018, the payment of the fees on 24 December was still too late.

Welmax appealed to the General Court, alleging infringement of Article 68(1) of Regulation 2017/1001, combined with Article 23(3) of Regulation 2018/625.

General Court Decision

The General Court stated that the applicable provisions were Articles 23 and 56 to 62 of Regulation 2018/625. It first examined the issue of the date of notification before discussing the issue of the appeal deadline, and finally considering the deadline to regularise the payment of the fees.

According to the case law, the rights and obligations arising from an individual act may not be relied upon against the addressee of that act until they have been duly informed of that act (LL v Parliament (Case C‑326/16 P), Paragraphs 45 and 46). In addition, Article 263(6) of the Treaty on the Functioning of the European Union provides that the deadline is two months from the date of notification or from the date on which the addressee becomes aware of it. The case law states that the notification takes place when the addressee becomes aware of the decision. With regard to trademark law, Article 58(3) (second sentence) of Regulation 2018/625 states that the EUIPO must establish that the letter reached the addressee or the date on which it was received. As a consequence, did 20 July 2018 constitute the date of notification?

The file did not clearly show what had happened and whether there was a signed acknowledgement of receipt or a document proving receipt. The EUIPO recognised that it did not have such proof. Therefore, it had not been proven that Welmax had knowledge of the content of the document sent on 11 July 2018, and even of the fact that such document existed or was sent.

Another issue concerned the address which was used, since the recipient’s address changed around 20 August 2017, according to the EUIPO. Welmax confirmed this, but also stated that its mail was being forwarded and that it had informed the EUIPO of this change on 27 July 2018 – after the EUIPO sent its decision on 11 July 2018. According to the case law, an unnotified change of address is without consequence if the decision has been sent to the address initially mentioned by the claimant (see LL v Parliament, Paragraph 54). The date of 20 July 2018 was therefore not the notification date. But what about the email dated 21 September 2018?

The Court of Justice of the European Union recently recognised that a decision may be notified by email if it can be proven that the recipient received it and was able to have knowledge of it. (GE.CO.P. v Commission (Case T‑280/17), Paragraph 50, and LL v Parliament, Paragraphs 55 and 56). More specifically with regard to trademark law, Article 56(2)(a) and Article 57(1) of Regulation 2018/625 includes the possibility for the EUIPO to make an electronic notification.

In the present case, Welmax recognised that it had received the email dated 21 September 2018 and was able at this date to have knowledge of the decision of the Opposition Division. It considered that this was the correct notification date, and that this date was the starting point for the appeal and to pay the fees. The delay expired on 21 November 2018 and, therefore, the appeal filed on 26 October 2018 was made on time.

According to the case law, the payment of the fees must be made within two months of the notification of the decision, meaning 21 November 2018 in this case. The payment made on 24 December was thus late and this could not be contested on the basis of requests for regularisation of formal irregularities stemming from the two letters of the EUIPO dated 26 November 2018.

The possibilities of regularisation of an appeal offered by Article 23(1)(c) of Regulation 2018/625 do not include the non-payment of fees; any lateness cannot be regularised, but can only lead to a request for restitutio in integrum. Nevertheless, after the expiry of the deadline, the EUIPO may allow the concerned party to explain itself and provide evidence or reasons (eg, force majeure or excusable mistake) which could have justified the lack of payment in time. This was not done by Welmax in this case.

According to the case law, it is only in exceptional circumstances that derogations can be made to a procedural deadline. Regardless of whether such circumstances are considered as unforeseeable or to amount to force majeure or excusable error, they all include a subjective element involving the obligation, on the part of the party acting in good faith, to prove that it exercised all the care and diligence required to monitor the proceedings and comply with the prescribed time limits (NUEVA (Case T‑61/13), Paragraph 38). This was not the case here, and Welmax had not tried to use the procedure for restitutio in integrum provided by Article 104 of Regulation 2017/1001to be allowed to pay the fees despite the delay.

In addition, Welmax had not filed a request for continuation of the proceedings under Article 105 of the same regulation. In any event, such request could not have been made since Article 105 is not applicable to issues such as deadlines regulated by Article 68 of the regulation.

Finally, even if the Board of Appeal of the EUIPO had wrongly based its decision on the notification date of 20 July 2018, the decision was justified on the basis of the notification date of 21 September 2018 since, in any case, the fees had been paid late.

Therefore, the EUIPO had correctly considered that the appeal had not been filed, and the action before the General court was dismissed.

This article first appeared on WTR Daily, part of World Trademark Review, in september 2020. For further information, please go to www.worldtrademarkreview.com.