EUIPO appeals to have extra weight, says new BoA chief

New managers often take time to find their feet before setting the wheels of change in motion. However, João Negrão will not need much time to settle in.

The incoming president of the EUIPO’s Boards of Appeal (BoA) – who starts his role on April 1 – is leaving his current role as director of the office’s international cooperation and legal affairs department.

Acutely aware of where improvement is required, he promises that by the end of this year, a five-year action plan will set out in the “clearest possible terms” where the BoA are heading and how to tackle the challenges ahead.

However, there are also immediate concerns he plans to address. Negrão, who was confirmed as BoA president in November last year, identifies five priorities: improving efficiency and effectiveness, increasing transparency, developing consistency in decisions, expanding use of alternative dispute mechanisms, and enhancing international cooperation.

Related stories

• The impossible task: CJEU appeals becoming extinct

• EUIPO lawyer: trademark disclaimers pose language difficulties

• Multinationals call on EUIPO to raise bar when ruling on use

In his first interview before taking on his new role, Negrão says machine learning and artificial intelligence (AI) can help achieve some of these goals.

He tells Managing IP that the complexity of some examinations, and the importance parties attach to appeals, should encourage a more open approach to using big data analytics and machine learning to aid the boards' work.

The BoA have already started implementing new tools to improve searches of established case law from the office, the BoA, and EU and national courts, he notes.

“The tools will decrease the time needed for searches during drafting [for applicants] and ultimately increase the quality of a decision,” says Negrão, who adds that further AI developments may also be used to help draft BoA decisions and increase their speed and coherency.

He adds: “The recourse to AI is spreading to all fields of human activity and it will also positively affect the decision-making process at the BoA, which will be looking into continuous room for automation.”

Sources previously told Managing IP they have noted inconsistencies at the EUIPO’s examination and opposition stages, and that sometimes decisions can be unpredictable at both the first instance and appeal levels.

Negrão says he is keen to address this at the appeal level. Predictability of BoA decisions is especially important now, he says, as parties’ options to appeal decisions have been restricted.

As of May 2019, trademark decisions that have already been considered on appeal twice (by the BoA and the EU General Court) will only be heard by the Court of Justice of the EU (CJEU) if they raise an issue deemed “significant to the development of EU law”. 

Negrão admits that this is a very high bar and that appellants will have a hard time finding a case that the CJEU will agree to take on. In fact, of 88 appeals to the CJEU filed since that rule was introduced, none has been granted.

“Since the majority of cases are now allowed only two instances of appeal instead of three, the system will now focus more attention on us as well as the General Court,” he says.

This puts added pressure on the BoA to provide legal certainty, coherence and consistency, he adds.

“The BoA will have the double responsibility of, on one hand, guiding EUIPO practice by feeding the examination guidelines and, on the other, assisting the General Court by way of high quality, carefully reasoned decisions.”

Although there are fears this new rule is taking a judicial option away from parties, Negrão notes that the BoA has the power to act like a court where required.

He points to a recent decision by the Second Board of Appeal in Kreativni Dogadaji v Hasbro, which surrounded alleged bad-faith applications for the EU trademark ‘Monopoly’.

Negrão notes that Hasbro was one of a few cases where the BoA conducted an oral hearing solely to better understand the commercial logic of one of the parties. “This demonstrates that the boards have most of the same means available to it that any court would have,” he notes.

He adds: “Legal certainty is paramount for users and for the credibility of the system as a whole. The BoA should continue to strive to further develop a consistent and coherent decisional practice, aligned with the case law of the European courts.”

A coherent approach will not only contribute to increased predictability and consistency of BoA decisions, but also provide clear guidance to EUIPO practice at the first instance, he says.

Negrão would like to see more options for small and medium-sized enterprises – particularly amid the challenges posed by the COVID-19 pandemic, which may have hit budgets.

One way the BoA can help is by encouraging alternative dispute resolution (ADR), he says.

In 2019, the BoA, building on an existing mediation offering, created the Alternative Dispute Resolution Service (ADRS).

The ADRS acts as a dispute resolution hub for businesses and individuals. As well as mediation, it provides assisted negotiation and expert determination. Due to the pandemic, all services are now available online and (from June 2020) were extended to cover opposition, cancellation and invalidity actions.

Negrão explains: “Litigation can be time-consuming, unpredictable and costly. The costs are not just in the professional fees but also extend to the management time diverted to administering ongoing legal proceedings – time that could have been devoted to profitable commercial pursuits.

“IP is particularly prone to cross-border disputes for which global solutions are necessary but for which traditional litigation simply encourages battles on multiple fronts.”

He adds: “In the years to come, the BoA will actively contribute to enhancing and broadening the use of ADR to offer parties, at an early stage, suitable mechanisms and tools for finding solutions to their conflicts.”

As well as making internal improvements, Negrão believes in looking outwards.

He says the BoA should not only provide guidance to EUIPO practice, but also act as a reference point for IP offices in EU member states and their respective appeal bodies, and cooperate with other external bodies such as courts, agencies and international organisations.

And if BoA decisions do carry extra weight, as predicted, Negrão can be confident of boosting their appeal.