Is the decision by the Executive Director of the EUIPO regarding extension of time limits in the context of the coronavirus outbreak (COVID 19) legally valid in every respect?

|Tanja Wittmann|

In the context of the coronavirus outbreak, the Executive Director of the European Union Intellectual Property Office (EUIPO) – with Decision No EX-20-3 of 16 March – extended all time limits expiring between 9 March 2020 and 30 April 2020 until 1 May 2020. In practice, the time limits will expire on 4 May 2020, since 1 May 2020 is a public holiday, followed by a weekend.

The extension relates to “all time limits expiring between 9 March and 30 April 2020 inclusive that affect all parties in proceedings before the Office”.

The decision was rendered on the basis of Article 101(4) EUTMR, which empowers the Executive Director to extend “all time limits” in the case of exceptional occurrence, such as a natural disaster or strike. The reference to “all time limits” is read literally by the Office and is supposed to encompass all procedural deadlines, irrespective of whether they have been set by the Office or are statutory in nature, i.e. are stipulated directly in the Regulations. For the sake of clarity, the Office explicitly states that this expression is to cover:

 

1. Time limits set by any instance of the Office, in any proceeding before the EUIPO, including its Boards of Appeal

2. Time limits imposed directly by the EUTMR, the EUTMIR or the EUTMDR as well as CDR and CDIR

  • including those originating from the Paris Convention or other International Treaties, and
  • regardless of whether they are excluded from restitutio in integrum within the meaning of Article 104 (5) EUTMR and Article 67(5) CDR

3. In particular, the following statutory time limits are supposed to be covered by the extension:

  • Payment of the Application Fee (Article 32 EUTMR)
  • Right of Priority (Article 34(1) EUTMR and Article 41 CDR)
  • Exhibition Priority (Article 38(1) EUTMR and Article 44 CDR)
  • Opposition Period (Article 46(1) EUTMR)
  • Payment of the Opposition Fee (Article 46(3) EUTMR)
  • Request for Renewal (Article 53(3) EUTMR and Article 13 CDR)
  • Filing of an Appeal and of the Statement of Grounds, payment of the Appeal Fee (Article 68 (1) EUTMR and Article 57 CDR),
  • Conversion (Article 139 EUTMR)
  • Deferment of publication of design (Article 50 CDR).

Considering the above listing of time limits one has to question whether the European Union Trademark Regulation (EUTMR) in fact can provide the Executive Director with such far-reaching powers as to suspend terms that were determined by the European legislative, i.e. the European Parliament and the Council of the European Union, or even were acknowledged by the conclusion of international treaties, such as for example the Paris Convention.

It should lie within the power of the Office to suspend terms set by it, such as terms for substantiating an opposition or for responding to a revocation request. Possibly, due to the empowerment contained in Article 101(4) EUTMR, the Executive Director also rightly could suspend terms fixed by the European legislator in the EUTMR, the EUTMIR or the EUTMDR. However, serious concerns are indicated when it comes to time limits originating from international treaties, such as the terms for claiming priority under the Paris Convention. Hence the Paris Convention states in Article 4C(1) that the period of priority referred to in the preceding paragraphs shall be six months for industrial designs and trademarks. It cannot rightly lie within the powers of the European legislation to empower one of its executive branches to suspend such a term.

 

Practical Consequences

Therefore, all in all, it should be considered very carefully with regard to each upcoming term whether use is to be made of the extension until 4 May 2020 granted by the Executive Director, or whether a timely submission of the relevant documentation is preferable.

Proceeding from the premises that the scope of the powers granted to the Executive Director by Article 101(4) EUTMR will be subject to a review by the European Court of Justice (ECJ) and that hence there will be no legal certainty in this regard until judgement by the Court, it is strongly recommended to observe all statutory terms that are to expire until 30 April 2020 and to timely submit all necessary documentation in due time.

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