Chris Hall and I have been involved in a design invalidation case before OHIM. The other side (the design proprietor) have had their appeal deemed inadmissible in a decision which (if it is followed in future) will affect how time limits should be calculated. At present this applies only to designs, but given the similarities between the relevant Articles in the Design and TM regulations, there must be a risk that it applies also to trade marks.
A bit of background:
- The Invalidity Division ruled that the design was invalid.
- The decision was faxed to the proprietor on 17 July 2009.
- In addition, on 21 July 2009, the decision was posted by registered mail.
- Receipt was acknowledged by the proprietor on 23 July 2009.
- The proprietor filed a Notice of Appeal on 24 September 2009.
This was deemed too late. The Third Board of Appeal ruled that the proprietor had been notified by fax on the 17 July, and therefore the Notice of Appeal had to be filed by 17 September 2009. It was irrelevant that the proprietor was later also notified by registered letter as required by Article 48(1) of the implementing regulations. This was as we argued before the Board of Appeal; so far, so good.
However, the Board went to comment that even if the decision had not been faxed to the proprietors, the Notice of Appeal would still have been filed too late. The proprietor had acknowledged receipt of the registered letter on 23 July; therefore the due date was 23 September 2009, i.e. regardless of the “10-day rule” for notification by registered post.
There are two important principles to take from the decision.
1. Decisions and communications subject to a time limit must be notified by registered post. However, they may also be sent by facsimile or other means. It is the first notification which is important for calculating time limits and dates. If the fax arrives before the registered letter, it is the date of receipt of the fax from which time limits should be calculated.
2. In the case of a registered letter, it is the date of receipt of the letter from which time limits should be calculated, not the date of posting plus 10 days (unless that leads to a date earlier than the date of receipt).
Both Chris and I think the second part of the decision cannot be right – effectively it takes away any meaning whatsoever for the 10-day rule. However, it would be worth taking this into consideration when dealing with OHIM, particularly when filing Notices of Appeal. In future it may be safest to file the Notice of Appeal within two months of the actual date of the decision.