In December 2012, Monster Energy Company had sought to file the Community trademark GREEN BEANS covering goods in Classes 5, 30 and 32. The application was rejected by the First Board of Appeal on December 20 2013 on the grounds of non-distinctiveness and descriptiveness.

The applicant claimed that following a check on the progress of the case in July 2014 it discovered that the First Board of Appeal decision had been issued but maintained that it had not received official notification of the decision. It requested that a new period for bringing an action should begin to run to allow it to file an appeal against the decision to the EU General Court.

The European Union Intellectual Property Office (EUIPO) contended that the First Board of Appeal’s decision had been notified by fax on December 20 2013. This was evidenced by a facsimile transmission report containing the date, time and fax number of the applicant accompanied by the word ‘OK’.

The applicant subsequently brought an action before the EU General Court against the First Board of Appeal’s decision. Simultaneously, it filed with the EUIPO an application for restitutio in integrum (under Article 81 of the EU Trademark Regulations) seeking to secure the re-establishment of its rights to challenge the First Board of Appeal’s decision before the EU General Court and in order for its GREEN BEANS mark to remain on the EUIPO register during the court proceedings.

The applicant contended that, in spite of having taken all due care, the fax notification from the Office for the Hamonisation of the Internal Market (predecessor to the EUIPO) was not received. It submitted that the EUIPO should use July 17 2014 as the date from which time started to run for an appeal to the EU General Court and should reinstate the GREEN BEANS application. The EUIPO stated that an application for restitutio in integrum was not within its jurisdiction in this instance due to the appeal to the EU General Court and that the court had to rule on the case. On appeal, this position was confirmed by the Second Board of Appeal.

In September 2015, the court dismissed the action against the First Board of Appeal’s decision as inadmissible owing to its belated nature. It was in those circumstances that the applicant brought the current action (relating to the restitutio in integrum) on October 5 2015.

At the heart of the matter was the applicant’s claim that the loss of the possibility of bringing an action before the EU General Court against a decision of the Board of Appeal owing to failure to comply with the time limit for bringing proceedings should be capable of being the subject of a procedure for restitutio in integrum, because the EUIPO is concerned by such a time limit as the institution which adopted the challengeable decision and as a potential party to the case before the EU General Court.

The EUIPO maintained that if it acknowledged that one of its departments had the power to grant an application for restitutio in integrum as regards a time limit for bringing an action before the EU General Court, this would mean encroaching on the jurisdiction of that court – which is the only court, subject to review by the European Court of Justice, which may assess whether a case which has been brought before it is admissible.

In the present case, the EU General Court held that even if the EUIPO Board of Appeal had allowed the application for restitutio in integrum, that would not have been binding on the court. The Board of Appeal was therefore right to declare itself not competent, like the Registry of the Boards of Appeal, to examine the application for restitutio in integrum filed by the applicant. The court further commented that the judicial procedure should not have been divided into two parts, that is, first, an action being brought and, secondly, the filing of an application for restitutio in integrum seeking a separate court ruling in order to assess whether the action was admissible due to the issues with time limits.

The appeal was dismissed and costs awarded against the applicant.

(This article was written for the World Trademark Review. The original article was published on July 11, 2016.)