A refusal to register an EU trade mark does not automatically mean the loss of any possibility of obtaining protection. The right to appeal at EUIPO gives an applicant a formalised mechanism for reviewing a first-instance decision \u2014 and it can be used not only after a refusal of registration but also after a decision in opposition proceedings that is unfavourable to one of the parties.<\/p>\n
Any party to proceedings adversely affected by a decision has the right to appeal (Article 67 EUTMR). An appeal is filed not against the registration procedure as a whole but against a specific act \u2014 and the notice of appeal must clearly state whether the decision is being contested in its entirety or only in part.<\/p>\n
A common mistake lies here. Preliminary examination objections raised during the examination of an application are not in themselves a decision that can be appealed. Until a formal decision has been issued, the applicant has the right to submit observations within the primary procedure \u2014 not the appeal procedure. In such a situation, the right to appeal arises after notification of the decision following examination \u2014 and it is the date of that notification that serves as the starting point for calculating the procedural deadlines.<\/p>\n
The procedure consists of two sequential steps with different deadlines.<\/p>\n
The Notice of Appeal must be filed within two months of the date of notification of the decision \u2014 and the appeal fee of \u20ac720 must be paid within that same period. Without payment of the fee, the appeal is deemed not to have been filed, even if the notice was submitted on time.<\/p>\n
The Statement of Grounds is filed separately, within four months of the same notification date. This period is longer than the first, so the grounds can be further developed after the notice of appeal itself has been filed.<\/p>\n
Missing either of these deadlines generally results in the loss of the right to appellate review: the further processing mechanism does not apply to them. In exceptional cases, where a party can demonstrate that it took all due care required by the circumstances, reinstatement of rights \u2014 restitutio in integrum under Article 104 EUTMR \u2014 may be available.<\/p>\n
For appeals in ex parte proceedings \u2014 that is, where the applicant is the sole party \u2014 an interlocutory revision procedure applies (Article 69 EUTMR): if the department that issued the original decision finds the appeal admissible and well founded, it must review its own decision without referring the case to the Board of Appeal. If the decision is not revised within one month of receipt of the Statement of Grounds, the case is referred to the Board of Appeal without delay.<\/p>\n
The EUIPO Board of Appeal examines the case primarily in written form, without an oral hearing \u2014 reviewing the correctness of the application of the law and the soundness of the grounds for refusal on the basis of the materials submitted.<\/p>\n
Following examination, the first-instance decision may be annulled in full or in part, amended on the merits, or the case may be remitted for re-examination to the department that issued the original decision.<\/p>\n
Where the Board upholds the refusal, the decision may be further challenged before the General Court of the EU within the period prescribed by Article 72(5) EUTMR; the Rules of Procedure of the General Court also apply when calculating that period precisely. A decision of the General Court may be appealed to the Court of Justice of the EU on points of law \u2014 but for cases originating from the independent Board of Appeal of EUIPO, such an appeal is not admitted unless the Court of Justice first permits it under Article 58a of the Statute of the Court of Justice of the EU, which it does in full or in part only where the case raises an issue that is significant for the unity, consistency, or development of EU law.<\/p>\n
Before pursuing that route, however, it is worth making a clear-eyed assessment of the alternatives. Depending on the grounds for refusal, a partial restriction of the list of goods or services may be a cheaper and faster solution than an appeal and can in some cases remove the very problem \u2014 although where the refusal concerns the sign itself in respect of the entire specification, such a restriction will not resolve anything. Filing a new application, by contrast, means a new filing date \u2014 unlike an appeal, which preserves the original filing date of the initial application if the challenge ultimately succeeds.<\/p>\n
The best strategy in relation to an appeal, however, is not to need one at all: a thorough risk assessment before filing<\/a> removes a significant proportion of the grounds for a future refusal at the preparation stage. Where a refusal has followed a third-party opposition<\/a>an appeal is not the only instrument: a negotiated settlement or a restriction of the specification often remains available even at this stage.<\/p>\n
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