Avoiding a Negative Decision on Record: Withdrawal of CTMs

When it comes to withdrawing CTM applications, how late is too late to prevent a negative decision taking effect? The point is a fine one but can be critical: an applicant may fear compromising other applications if a CTM is actually refused, and knowing just how long he has to decide the way forward can assume utmost importance. OHIM’s Grand Board of Appeal recently mulled this question in a case involving the trade mark OPTIMA (R 331/2006-G).

 

The OPTIMA Facts

In OPTIMA, the German applicant, Heidelberger Druckmaschinen AG, applied to register OPTIMA as a CTM in Classes 9 and 16. The examiner issued a refusal on the grounds that the mark was non-distinctive and descriptive. Within the two-month appeal term, the applicant withdrew the application by letter.

Six months later, the applicant noticed the application was described as “refused” rather than “withdrawn” on the CTM-OnLine database. The applicant reminded the examiner that the application had been withdrawn. The examiner replied that the application had already been refused by virtue of the original letter raising the objections, and since no appeal had been filed there had been nothing left for the applicant to withdraw.

 

A Grand Entrance

The applicant appealed the examiner’s refusal to accept withdrawal of the application. The Grand Board of Appeal upheld the appeal.

It was clear under Article 44 (1) of the CTM Regulation that “the applicant may at any time withdraw his Community trade mark application.” This meant that withdrawal was permissible at any stage of proceedings before OHIM. There was no legal basis for refusing to allow withdrawal at any stage.

As regards the examiner’s decision to refuse the mark, appeal proceedings had a suspensive effect under Article 57 (1) CTMR. A decision of the Office would not take legal effect until the last appeal period had expired without an appeal being filed. The Grand Board recounted a wide range of situations in which withdrawals had been permitted at stages as late as in the midst of appeals to the Boards of Appeal, the CFI and even the ECJ.

In this case, the applicant had tendered its withdrawal before the appeal term had expired. It had therefore been entitled to withdraw the application. The application should have been recorded as “withdrawn” rather than “refused,” and the examiner's decision was overturned.

 

Comment

This case helpfully confirms that where a CTM is withdrawn before the last appeal term has expired, an applicant may avoid the application being classified as “refused” with all its repercussions on co-pending applications elsewhere. In the case of a borderline mark, a refusal by OHIM might tip the scales against an applicant elsewhere and may be well worth avoiding.

The OPTIMA experience is also a salient reminder of the importance of following up on requests for withdrawal before OHIM, to ensure that they are actioned in a timely manner and in accordance with proper practice. The Grand Board expressed consternation at the decision of the examiner in this case, which it regarded as out of step with Office practice. Nonetheless, mistakes do happen, and a swift follow-up early on may avoid a costly argument on appeal later.