CELEX: 62006TJ0277
Community trade mark
Opposition proceedings
Application for Community word mark OMNICARE
Earlier national figurative mark OMNICARE
Refusal of an application for restitutio in integrum

Legal context
Article 78(1) to (5) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (
OJ 1994 L 11, p. 1
), as amended, provides:
‘1.   The applicant for or proprietor of a Community trade mark or any other party to proceedings before the Office who, in spite of all due care required by the circumstances having been taken, was unable to observe a time-limit vis-à-vis the Office shall, upon application, have his rights re-established if the non-observance in question has the direct consequence, by virtue of the provisions of this Regulation, of causing the loss of any right or means of redress.
2.   The application must be filed in writing within two months from the removal of the cause of non-compliance with the time-limit. The omitted act must be completed within this period. The application shall only be admissible within the year immediately following the expiry of the unobserved time-limit. In the case of non-submission of the request for renewal of registration or of non-payment of a renewal fee, the further period of six months provided in Article 47(3), third sentence, shall be deducted from the period of one year.
3.   The application must state the grounds on which it is based and must set out the facts on which it relies. It shall not be deemed to be filed until the fee for re-establishment of rights has been paid.
4.   The department competent to decide on the omitted act shall decide upon the application.
5.   This Article shall not be applicable to the time-limits referred to in paragraph 2 of this Article, Article 42(1) and (3) and Article 78a.’
Article 78a of Regulation No 40/94 provides:
‘1.   An applicant for or proprietor of a Community trade mark or any other party to proceedings before the Office who has omitted to observe a time-limit vis-à-vis the Office may, upon request, obtain the continuation of proceedings, provided that at the time the request is made the omitted act has been carried out. The request for continuation of proceedings shall be admissible only if it is presented within two months following the expiry of the unobserved time-limit. The request shall not be deemed to have been filed until the fee for continuation of the proceedings has been paid.
2.   This Article shall not be applicable to the time-limits laid down in Article 25(3), Article 27, Article 29(1), Article 33(1), Article 36(2), Article 42, Article 43, Article 47(3), Article 59, Article 60a, Article 63(5), Article 78, Article 108, or to the time-limits laid down in this Article or the time-limits laid down by the Implementing Regulation referred to in Article 157(1) for claiming priority within the meaning of Article 30, exhibition priority within the meaning of Article 33 or seniority within the meaning of Article 34 after the application has been filed.
3.   The department competent to decide on the omitted act shall decide upon the application.
4.   If the Office accepts the application, the consequences of having failed to observe the time-limit shall be deemed not to have occurred.
5.   If the Office rejects the application, the fee shall be refunded.’
Background to the dispute
On 26 June 1996, the applicant, Omnicare Inc., filed an application for the registration of the word mark OMNICARE for goods and services in Classes 16 and 42 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of , as revised and amended.
The application was published in
Community Trade Marks Bulletin
No 90/1999 of 15 November 1999.
On 3 February 2000, Yamanouchi Pharma, GmbH — whose rights have been taken over by Astellas Pharma GmbH, intervener in the present proceedings — filed a notice of opposition under Article 42 of Regulation No 40/94 against the registration of the trade mark applied for, based on German trade mark registration No 39 401 348 of the figurative mark registered on for services in Classes 35, 41 and 42 of the Nice Agreement, depicted below:
The opposition was based on all the services covered by the earlier registration and was directed against all the goods and services referred to in the application.
The ground of the opposition was the likelihood of confusion between the trade mark applied for and the earlier mark, as referred to in Article 8(1)(b) of Regulation No 40/94.
On 30 November 2005, the Opposition Division adopted a decision rejecting the application for registration in its entirety and ordered the applicant to bear the costs of the proceedings.
The decision of 30 November 2005 was communicated to the parties on the same day.
On 23 March 2006, the applicant filed a statement of grounds for the appeal that it had brought before OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94, against the decision of the Opposition Division, referring to the notice of appeal that it claimed to have filed against that decision on .
On 27 March 2006, the Registry of the Boards of Appeal informed the applicant that the notice of appeal had not been received.
On 30 March 2006, the applicant filed a notice of appeal as well as, once again, the statement of grounds for its appeal.
On 12 May 2006, the Registry of the Boards of Appeal informed the applicant that its appeal was likely to be deemed inadmissible, since no notice of appeal had been filed within two months from the notification of the decision of the Opposition Division. The applicant was invited to submit its comments and any supporting evidence, within two months.
On 30 May 2006, the applicant filed an application for
restitutio in integrum
pursuant to Article 78 of Regulation No 40/94.
In support of its application for
restitutio in integrum
, the applicant filed copies of the notice of appeal sent by fax to OHIM, according to the applicant, on 30 January 2006 and the statement of grounds of appeal filed on . It pointed out, furthermore, that, upon notification of non-receipt of the notice of appeal given by OHIM on , the notice of appeal as well as the statement of grounds were re-filed on .
The applicant explained, moreover, that the reason for which the time-limit for filing the notice of appeal was not observed was a human and/or mechanical failure in faxing the document and it provided two witness statements in support of its claims.
By decision of 24 July 2006 (‘the contested decision’), the Second Board of Appeal rejected the application for
restitutio in integrum
.
The Board of Appeal held in that regard:
‘20.
The applicant acknowledges that it was informed by the Office, on 27 March 2006, that the Office had not received the notice of appeal purportedly faxed on , the last day for filing the notice of appeal. The notice of appeal was re-filed on , after due verifications. Thus, the applicant must have been aware of the omitted act no later than that date.
21.
The application for
restitutio in integrum
was filed on 30 May 2006, which was within two months of the removal of the cause of non-compliance (i.e. not being aware of the failure in the fax transmission of the notice of appeal, on ). It is therefore admissible.
…
24.
Indeed, it results from the combined provisions of Article 78(5) of Regulation No 40/94, as amended, and Article 78a of Regulation No 40/94, inserted by Council Regulation (EC) No 422/2004, in particular its paragraph 2, that
restitutio in integrum
is not available when the missed time-limit is the time-limit to file an appeal, laid down in Article 59 [of Regulation No 40/94]. By these new provisions, the legislator seems to have wished to fill a gap in the provisions of Article 78(5) before its modification, which excluded
restitutio in integrum
only when the missed time-limit was the one to file an opposition, laid down in Article 42 [of Regulation No 40/94] (see, in this sense, Decisions of 22 May 2003, in connexity Cases R-388/2002-2 and R-393/2002-2,
CosmoOne Hellas MarketSite
v
Cosmopolitan Television, et al.
). Whereas both the time-limit to file an opposition (as per Article 42 [of Regulation No 40/94]) and the time-limit to file an appeal (as per Article 59 [of Regulation No 40/94]) are peremptory time-limits, set by [Regulation No 40/94] itself, the previous system, excluding
restitutio in integrum
in the first case, but not in the second, seemed to lack internal coherence and had thus given ground to scepticism within the Boards (see Decision of , in Case R-194/2003-2
Met-L-Chek
v
Met-L-Check
and Decision of , in Case R-937/2002-2
Paragon
v
Paragon
). This incoherence was cured by the legislator with Regulation No 422/2004, which specifies either directly in paragraph (5) of Article 78, as amended, or indirectly by reference to the provisions of the new Article 78a of Regulation No 40/94, the peremptory time-limits set by [Regulation No 40/94] where
restitutio in integrum
is not available, putting in par the peremptory time-limit to file an opposition and the time-limit to file an appeal.
25.
It results from the above provisions as amended or introduced by Council Regulation (EC) No 422/2004, which came into force on 25 July 2005, that
restitutio in integrum
is excluded when the unobserved time-limit is the time-limit to file an appeal, provided in Article 59 of Regulation No 40/94.
26.
Therefore, the application for
restitutio in integrum
must be dismissed as regards the belated filing of the notice of appeal.’
Procedure and forms of order sought
The applicant claims that the Court should:
—
annul the contested decision in its entirety;
—
remit the application for
restitutio in integrum
to the Board of Appeal;
—
order OHIM to pay the costs.
OHIM, deferring to the assessment of the Court, contends that the Court:
—
were it to find that the Board of Appeal’s interpretation of Article 78 was correct, should
—
dismiss the action;
—
order the applicant to pay the costs;
—
were it to find that the Board of Appeal’s interpretation of Article 78 was incorrect, should
—
annul the contested decision;
—
order each party to bear its own costs.
The intervener contends that the Court should dismiss the action and order the applicant to pay the costs.
As none of the parties attended the hearing on 13 January 2009, the Court, after opening the oral procedure, decided that there was no need to open proceedings pursuant to Article 56 of the Rules of Procedure of the Court of First Instance and closed the oral procedure.
Law
Arguments of the parties
The applicant claims that the Board of Appeal infringed Article 78(5) of Regulation No 40/94.
It maintains, in effect, that Article 78(5) of Regulation No 40/94 which, as amended, provides that ‘this Article shall not be applicable to the time-limits referred to in paragraph 2 of this Article, Article 42(1) and (3) and Article 78a’, means that an application for
restitutio in integrum
cannot be made if it concerns a failure to comply with any of the time-limits provided for in one of those provisions.
According to the applicant, Article 78(5) of Regulation No 40/94 does not, however, provide that the provisions of Article 78 are not to be applicable to the time-limits referred to in the various articles detailed within Article 78a of that regulation.
However, that was the incorrect interpretation of the Board of Appeal.
According to the applicant, the Board of Appeal considered that Article 78(5) of Regulation No 40/94 should be applied not only to the time-limits referred to directly in the four provisions it mentions, but also to all the other time-limits that are mentioned indirectly in every other article listed within those four provisions.
The applicant submits that, pursuant to Article 78(5) of Regulation No 40/94, that provision applies only to the time-limits ‘referred to’ in the four provisions which are mentioned therein and not to the time-limits that are mentioned indirectly within those four provisions.
Thus, the time-limit in which to file an appeal is not referred to in Article 78a of Regulation No 40/94, but only in Article 59 of that regulation. It is therefore not excluded from the operation of an application for
restitutio in integrum
.
OHIM considers, in essence, that that interpretation of Article 78(5) of Regulation No 40/94 is not without some foundation.
OHIM points out, essentially, that Article 78 of Regulation No 40/94 relates to the restoration of rights following a situation like that of
force majeure
and that Article 78a of the regulation relates to the continuation of proceedings.
According to OHIM, it is logical to consider that those situations, despite having features in common, cannot and should not be treated in an identical manner.
Although it is clear that failing to lodge an opposition within the time-limits laid down cannot be remedied, as expressly stated in Article 78(5) of Regulation No 40/94, it is, however, not so clear, according to OHIM, that the same applies to the belated lodging of an appeal.
OHIM contends that it is almost certain that the legislature’s intention was that the numerous provisions referred to in Article 78a(2) of Regulation No 40/94 should all relate to the impossibility of continuing proceedings. However, it is far from clear that they were meant also to cover
restitutio in integrum
. OHIM considers, in that regard, that if the legislature had wished to exclude the latter, it is more likely that it would have expressed itself unambiguously to that effect, as it did in respect of opposition cases, thus leaving no room for doubt as to the position to be adopted in the situations listed in that provision.
OHIM submits that that interpretation would seem, moreover, to be in line with Communication No 6/05 of the President of OHIM of 16 September 2005 on restoration into missed time-limits (OJ OHIM 2005, 1402), which states:
‘By referring to Article 78a, Article 78(5) excludes the time-limit for requesting further processing and to pay the further processing fee. So, this provision only excludes double relief for the same time-limit. Article 78(5) does not exclude the time-limits which Article 78a mentions as not being available for further processing.’
OHIM has doubts, therefore, as to the legality of the position adopted by the Second Board of Appeal.
Furthermore, OHIM points out that, in Case R 628/2006-2, ‘Sidescan’, another Board of Appeal held, in a decision of 13 September 2006, regarding the belated filing of an appeal, that it was admissible for the purposes of
restitutio in integrum
.
Finally, OHIM observes that the Court has itself in several judgments, such as that in Case
T-71/02
Classen Holding
v
OHIM — International Paper (BECKETT EXPRESSION)
[2003] ECR II-3181
, considered, under the previously applicable rules, the issue of the formal requirements for the filing of a written statement setting out the grounds of appeal and the time-limit for applying for
restitutio in integrum
.
The intervener considers, in essence, that the Board of Appeal was correct in rejecting the application for
restitutio in integrum
and that there is no distinction, as the applicant claims, between the time-limits directly referred to and those indirectly referred to in Article 78(5) of Regulation No 40/94.
The intervener considers, therefore, that Article 59 is referred to in Article 78(5) of Regulation No 40/94.
It adds that the application for
restitutio in integrum
was not admissible, since it did not comply with Article 78(2) of Regulation No 40/94, which provides that the application must be filed in writing within two months from the removal of the cause of non-compliance with the time-limit.
The intervener points out that, on 27 March 2006, OHIM telephoned the applicant to inform it that the notice of appeal had not been received. Consequently, the final date for lodging an application for
restitutio in integrum
was . As was a Saturday, the two-month time-limit expired on . The application was filed on and therefore not within the prescribed time-limit.
Findings of the Court
Article 78(5) of Regulation No 40/94, as amended by Council Regulation (EC) No 422/2004 of 19 February 2004 (
OJ 2004 L 70, p. 1
), provides that ‘this Article shall not be applicable to the time-limits referred to in paragraph 2 of this Article, Article 42(1) and (3) and Article 78a’.
It must be observed that neither the preamble to Regulation No 422/2004 nor the
travaux préparatoires
for that regulation shed any useful light on the intentions of the legislature.
The phrase ‘to the time-limits referred to in … Article 78a’ in Article 78(5) of Regulation No 40/94, as amended, cannot, however, be interpreted to mean that the time-limits laid down by the provisions referred to in Article 78a(2) of Regulation No 40/94 are also to be excluded from the scope of application of Article 78 of that regulation. Such time-limits are not ‘referred to’ in Article 78a of Regulation No 40/94.
Therefore, the assessment of the Board of Appeal that the mandatory time-limit for filing an opposition and the time-limit for filing an appeal are put on the same footing, both excluding
restitutio in integrum
, is incorrect.
The Board of Appeal’s reasoning that the legislature intended, in 2004, to specify that
restitutio in integrum
did not apply to Article 59 of Regulation No 40/94 is contradicted, first of all, by the absence of an express reference to Article 59 in the list of exceptions. If the legislature had intended to remove any doubt on that point, it could reasonably have been expected to do so expressly, specifically when it was amending Article 78(5) of Regulation No 40/94.
Next, doubt appears to be cast on the Board of Appeal’s reasoning based on a successive series of exclusions by the fact that Article 42 of Regulation No 40/94 is also referred to in Article 78a of that regulation. All the references to Article 42(1) and (3) of Regulation No 40/94 should logically have had to be removed from Article 78(5) of that regulation if the Board of Appeal’s reasoning was correct. However, that is clearly not the case, which supports the argument that the limitations in Article 78(5) of Regulation No 40/94 do not concern Article 59 thereof.
Lastly, as Article 78(5) of Regulation No 40/94 limits the procedural rights granted by that article to the parties, that provision must be interpreted strictly. The Board of Appeal’s interpretation, however, conflicts with that principle and, therefore, cannot be followed.
The contested decision must therefore be annulled.
With regard to the lateness of the application for
restitutio in integrum
raised by the intervener, it should be noted that, in accordance with the first subparagraph of Article 134(3) of the Rules of Procedure, an intervener may, in its response, seek an order annulling or altering the decision of the Board of Appeal on a point not raised in the application and put forward pleas in law not raised in the application.
However, the intervener asked that the application be dismissed, not that the contested decision be altered.
Moreover, it should be noted that that question of the admissibility of the application for
restitutio in integrum
was not discussed by the parties in their pleadings and that, as the intervener and the applicant indicated that they did not wish to attend the hearing, the Court was not able to allow the parties to debate that issue before it.
For all of those reasons, the Court considers that the action must be upheld and the application for
restitutio in integrum
be referred back to OHIM for a decision.
Costs
Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
Since OHIM has been unsuccessful, it must be ordered to pay the costs incurred by the applicant, in accordance with the form of order sought by the latter.
The intervener is to bear its own costs.

On those grounds,
THE COURT OF FIRST INSTANCE (Third Chamber)
hereby:

1.
Annuls the decision of the Second Board of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) of 24 July 2006 (Case R 446/2006-2);

2.
Orders OHIM to bear its own costs and to pay the costs incurred by Omnicare, Inc.;

3.
Orders Astellas Pharma GmbH to bear its own costs.

Azizi
Cremona
Frimodt Nielsen
Delivered in open court in Luxembourg on 7 May 2009.
[Signatures]
(
*1
)	Language of the case: English.