The matter at hand

This case concerns a rather remarkable situation in which an EU trade mark proprietor, who was invited to submit proof of genuine use in a revocation action, missed a deadline twice.

The Green Effort, confronted with a revocation action filed by Fédération internationale de l’automobile (FIA) against its EU trade mark FORMULA E, submitted proof of genuine use a day after the deadline set by the Cancellation Division expired. As a result, the submitted proof was not taken into account and the contested mark was revoked in its entirety. The appeal against this decision was dismissed by the Second Board of Appeal by decision of 19 September 2017 and that decision was placed in the inbox of The Green Effort’s representative on the same date. The Green Effort subsequently appealed that decision by application of 4 December 2017.

The General Court dismissed the appeal, given that The Green Effort had been notified of the contested decision of the Second Board of Appeal on 19 September 2017 and that that the time limit for bringing an action before it had thus expired on 29 November 2017 (two months after the date of the notification, extended by ten days on account of distance).

Before the ECJ, The Green Effort invoked Article 4(4) of decision No EX-13-2 of 26 November 2013, adopted by the Executive Director of EUIPO, governing electronic communications with and by EUIPO (identical to Article 3(4) of decision EX-18-1 of 15 May 2018). This Article provides that “Without prejudice to accurately establishing the date of notification, notification will be deemed to have taken place on the fifth calendar day following the day on which the Office placed the document in the user’s Inbox.” The Green Effort submitted that notification should therefore be deemed to have taken place on the fifth calendar day following 19 September 2017. According to The Green Effort, this means that the notification must be deemed to have taken place on 25 September 2017 (since 24 September 2017 was a Sunday) and that the time limit for bringing an action against the contested decision expired on 5 December 2017.

The judgment of the ECJ

The ECJ starts by referring to Article 65 in conjunction with Article 79 of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark, according to which actions may be brought before the General Court within two months of the date of notification of the decision of the Board of Appeal. The ECJ also refers to Rule 65(2) of the Community Trade Mark Implementing RegulationCommission Regulation [EC] No 2868/95 of 13 December 1995 implementing Council Regulation [EC] No 40/94 on the Community trade mark, as amended by Commission Regulation [EC] No 1041/2005 of 29 June 2005, pursuant to which details of notification by technical means, other than by telecopier, are to be determined by the President of the Office, now the Executive Director of EUIPO. On this basis, the ECJ establishes that decision No EX-13-2 of 26 November 2013 governing electronic communications with and by EUIPO, which was adopted by the Executive Director of EUIPO, is indeed applicable in the present case.

As to the interpretation of Article 4(4) thereof (and Article 3(4) of decision EX-18-1 of 15 May 2018), the ECJ acknowledges that the wording of that provision does not allow the scope to be given to the words ‘without prejudice’ in that provision, to be ascertained unequivocally.

EUIPO suggested that ‘without prejudice to accurately establishing the date of notification’ meant ‘notwithstanding any other date on which notification might be established’ or ‘regardless’, but the ECJ rejects this interpretation, since “that interpretation would render entirely irrelevant the reference in that provision to accurately establishing the date of notification, since the notification would, in all circumstances, be deemed to have taken place on the fifth calendar day following the day on which EUIPO placed the document in the user’s inbox” (paragraph 42). The ECJ rules that in this light, Article 4(4) of decision No EX-13-2 of 26 November 2013 (and Article 3(4) of decision EX-18-1 of 15 May 2018) “must be interpreted as meaning that notification will be deemed to have taken place on the fifth calendar day following the day on which EUIPO placed the document in the user’s inbox, unless the actual date of notification can be accurately established as a different date within that period of time” (paragraph 43).

Applying this principle, the ECJ rules that such different date is the date on which the user of the inbox requested access to the notification and downloaded it (provided that date can be accurately established). In other words, if no access to the notification was requested within five days after the notification was placed in the user’s inbox, the notification will be deemed to have taken place on the fifth day after the day on which EUIPO placed the document in the inbox. If, however, access was requested prior to the fifth day, that day is the date of notification. The ECJ considers that this interpretation “meets the requirements stemming from the principle of legal certainty by preventing a decision of the Board of Appeal from being called into question indefinitely, given that, if no access to the document concerned is requested after it has been placed in the recipient’s inbox, the notification is deemed to have taken place on the fifth calendar day after being so placed” (paragraph 44).

Establishing that it is common ground in the present case that the representative of The Green Effort requested access to the contested decision on 19 September 2017 and downloaded it and became aware of it on that same day, the ECJ concludes that the General Court did not err in law in deciding that the time limit for bringing an action against the contested decision expired on 29 November 2017.