Amended Rules of Procedure of the Boards of Appeal of EUIPO

As part of the Action Plan 2021-2026, an internal roadmap of the Boards of Appeal, the EUIPO (European Intellectual Property Office) has published a consolidated version of its Rules of Procedure. We have summarised the most important changes for you.

The Boards of Appeal are responsible for deciding on appeals against first instance decisions taken by EUIPO concerning EU trade marks and Community designs. The Rules of Procedure of the Boards of Appeal are a comprehensive set of procedural rules applicable to all appeal proceedings before the Boards of Appeal and to all parties and the decision-makers. Their publication aims to increase transparency, coherence and legal certainty for users in the appeal system, as well as to simplify the decision-making processes in the Boards of Appeal.

The Rules of Procedure contain rules on, among other, extensions of time limits, confidentiality requirements and requirements for the grounds of appeal.

The main changes, which came into force on 19 February 2022, include:

• Requests for extension of time limits filed by both parties and from which no precise time limit is indicated may be granted by default for a period of one month (Art. 3 No. 7).
• In the case of oral hearings, there is the possibility of conducting them by video conference (Art. 30 No. 1).
• Within the framework of alternative dispute resolution, Assisted Negotiation and Expert Determination are added as further instruments (Art. 33 No. 1).
• The Board shall discontinue the appeal proceedings and make a decision on costs if the appeal becomes devoid of purpose (Art. 42 No. 2). This is the case, inter alia, if earlier rights on which the opposition were based have been declared null and void, cancelled or restricted in the meantime. 
• In the event no period is indicated in the application for suspension, the Board will in principle no longer grant a suspension of two months, but only of one month (Art. 44 No. 5).
• Unless requested or consented by both parties any request for suspension filed prior to the Final Procedural Check, which does not contain reasons shall be rejected by the Registry (Art. 44 No. 8).
• Where the appeal is declared inadmissible due to the absence or belated filing of the statement of the grounds, the appellant shall bear the representation costs of the other party (Art. 62 No. 2b).

Some changes reflect the previous practice of the Board of Appeal. Thus, as a rule, the appellant was already charged the representation costs of the opposing party if the appeal was declared inadmissible as a result of his failure to file a statement setting out the grounds of appeal.

It will be interesting to see whether the new possibility of conducting oral proceedings by video conference will lead to the Board of Appeal scheduling oral proceedings more frequently. Oral proceedings at the EUIPO have been a rarity so far. When deciding whether to order oral proceedings, the Office takes into account whether oral proceedings are needed to justify its decision. The reasons for not doing so are mainly related to the economy of the proceedings and whether the parties have had sufficient opportunity to present their arguments and facts in writing.

Authors: Tien Nguyen & Dr. Sascha Pres