Opinion of the Advocate General — ECLI:EU:C:2012:424
Date: 2012-07-05
Language of the case: German
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - successful;Appeal - successful
Origin: Austria

Summary — Judgment of the Court (Second Chamber), 18 October 2012 Community trade mark – Procedural provisions – Opposition proceedings – Communication relating to the admissibility of an opposition – Legal nature – Rights of defence (Council Regulation No 40/94, Arts. 57 and 77a; Commission Regulation No 2868/95, Art. 1, Rules 17 and 18) A communication from the Office for Harmonisation in the Internal Market (Trade Marks and Designs) to the effect that an opposition has been found to be admissible constitutes a decision. First, it is apparent from Title II of Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark that proceedings to oppose registration of a trade mark comprise two separate stages. Rule 17 of that regulation sets out the conditions under which the opposition may be regarded as admissible and states, at paragraph 5 of that rule, that the decision which establishes that the opposition is deemed not to have been entered or that it must be declared inadmissible is to be notified to the applicant. It follows that the stage at which admissibility is examined may lead to the adoption of a decision terminating the proceedings, which, as such, is subject to appeal, pursuant to Article 57(1) of Regulation No 40/94 on the Community trade mark. Moreover, Rule 18(1) of the Implementing Regulation states that ‘[w]hen the opposition is found admissible pursuant to Rule 17, the Office shall send a communication to the parties informing them that the opposition proceedings shall be deemed to commence two months after receipt of the communication’. It is apparent from the very wording of Rule 18 that the opposition proceedings themselves, that is, the inter partes stage, commence only when the Office has verified that the opposition is admissible and that none of the grounds set out in Rule 17 precludes admissibility. The use of the words ‘jugée recevable’ (found admissible) in the French version of the Implementing Regulation indicates that the European Union legislature intended that the Office should examine, at that stage in the proceedings, whether the opposition is admissible and satisfy itself that the opposition fee has been duly paid. The other language versions of the Implementing Regulation use the words ‘se considere admisible’ in Spanish, ‘gilt’ in German, ‘found admissible’ in English and ‘considerata ammissibile’ in Italian. The examination of those different versions – with the exception of the German version, in which the word ‘gilt’ does not have the same force as the words used in the other language versions – shows that the opposition must be found admissible before the inter partes proceedings can commence. Lastly, it follows from Article 57(2) of Regulation No 40/94 that there may be measures which, while they are adopted in the course of the proceedings and do not terminate them, nevertheless constitute decisions. However, the categorisation of that communication as a ‘decision’ on the admissibility of the opposition would not compromise the protection of the rights of the defence. First, the opposing party has no interest in bringing an action against a measure by which the Office finds its opposition admissible. Second, if the Office errs in its assessment of the admissibility of the opposition by declaring, incorrectly, that it is admissible and thus initiates the inter partes proceedings, the defendant in the opposition proceedings is not deprived of the opportunity to assert its rights. The defendant in the opposition proceedings may, first of all, submit to the Office that an error has been made concerning the admissibility of the opposition and request that it withdraw the decision by which it found the opposition to be admissible, on the basis of Article 77a of Regulation No 40/94. Secondly, it is open to the defendant in the opposition proceedings to seek annulment of the measure finding the opposition admissible. Such an application for annulment may be made in the appeal against the decision adopted at the conclusion of the inter partes proceedings. In so far as that measure does not terminate the proceedings, it can be appealed together with the final decision on the substance of the opposition, in accordance with Article 57(2) of Regulation No 40/94. It is apparent from the examination of all those provisions that, where the Office finds that the opposition is admissible, the inter partes stage of the proceedings commences. For a period of six months, where the decision by which opposition was found to be admissible contains an obvious procedural error, it may be withdrawn ex officio or at the request of one of the parties, which has the effect of terminating the opposition proceedings. Once that period has expired, the inter partes stage of the proceedings must be pursued and a decision must be given. In the latter instance, the defendant to the opposition proceedings may bring an appeal before the Board of Appeal and argue that the opposition was inadmissible. Thus, it is apparent that the rights of the defendant in the opposition proceedings are ensured protection by the withdrawal mechanism provided for in Article 77a of Regulation No 40/94 and the appeal mechanism in Article 57 of the regulation. It follows from all the above considerations that the European Union legislature has provided, first, two separate stages in the opposition proceedings and, second, mechanisms to enable the defendant in the opposition proceedings to contest the decision by which the Office incorrectly finds the opposition admissible. (see paras 48-52, 55-58, 63-65, 68, 69)