By Cristina Bercial-Chaumier, ECTA EUIPO-Link Committee Secretary, Harmonization Committee and Supervisory Board Member, Casalonga Alicante SL, ES

One of the proposed changes for the next revision of the Guidelines entering into force on 22 March 2022 is the publication of decisions refusing an EUTM application on absolute grounds.

As a result of this change in practice, all decisions issued after the entry into force of the new Guidelines will be made available in the eSearch case-law database the day following their notification, irrespective of whether the decision becomes final. If approved, the change will fully align the manner in which these decisions are made publicly available in its eSearch case-law database with that of the Office’s other decisions (opposition, cancellation, appeal, etc.).

In practice, this will alter the consequences of withdrawing an EUTM application during the two-month appeal period following the receipt of a refusal decision.

Withdrawal in this period will still be possible but, even if withdrawn, the refusal decision will be publicly available in the eSearch case law database. While the Office will take note of the withdrawal and close the case, the decision itself is not revoked and may still produce effects. The legal effects can still be enforced, for example, by blocking the conversion of the EUTM into a national mark, where the grounds for refusal of registration on which the decision is based preclude protection in a particular Member State.

Currently, such decisions are not made available in this database if the EUTM is withdrawn before the decision becomes final. In practice, when encountering an objection on absolute grounds, the applicant has the possibility of withdrawing the application so that it would appear as withdrawn rather than refused and the refusal decision is not made public.

In contrast, with the proposed change, the Application will still appear as withdrawn but the refusal decision will be public even if not final.

The EUIPO argues that the justification for this proposal is to fully comply with Article 113 EUTMR of the EUTM Regulation, which establishes that decisions of the Office shall be made available to the general public, and that it is in the interest of greater transparency and predictability for the benefit of all users.

The Office further notes that while the decision itself will be made publicly available in the eSearch case law database where the EUTM is totally refused or withdrawn during the appeal period, pursuant to Article 113(1) EUTMR, the content of the EUTM file (e.g. observations received, deficiencies issued, etc.) will not be open for public inspection unless consent is granted, pursuant to Article 114(1) EUTMR.

The Article 114(1) EUTMR establishes that the files relating to EUTM applications that have not yet been published shall not be made available for inspection without the applicant’s consent. Even though a complete inspection of the file is not provided by the proposed publication, it is clear that the disclosure of an important part of the file is provided prior to its publication and most likely without the applicant’s consent.

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