The Organic Administrative Code ("COA") provides that, against the decisions issued by the public administration, there are two kinds of appeals: ordinary appeal and extraordinary appeal for review. The first seeks to have the authority re-analyze the merits of the case with a view on modifying its decision. The extraordinary appeal for review, on the other hand, is possible only when any of the specific grounds provided for in the COA are met - it does not constitute a third instance - hence its extraordinary nature. In recent years, a common practice has been to file an extraordinary appeal for review against final decisions denying or granting the registration of a trademark, against which the ordinary appeal has already been lodged -or it was not filed in due course- in order for the National Service for Intellectual Rights ("SENADI") to change its criteria regarding the risk of confusion or association between the conflicting marks. Although the SENADI prima facie gives way to this type of procedure, it has stated that "The extraordinary appeal for review constitutes a legal remedy aimed at correcting an error in the formation of the administrative will, or any illegality in the issuance of the decision, with the interested party having the ordinary remedies to disagree with the criteria of the judge, in this case, with the comparative analysis of the confronted marks.1"
In this regard, Article 232 of the COA provides that "The interested individual may file an extraordinary appeal for review of the final administrative act when any of the following circumstances are verified:
1. That when issuing them, an obvious and manifest factual error has been incurred in, which affects the merits of the case, provided that the factual error results from the documents incorporated into the file.
2. That when issuing them, an obvious and manifest error of law has been incurred in, which affects the merits of the case. (.) The extraordinary appeal for review shall be filed, in the case of cause 1, within a period of one year following the date of notification of the contested decision (.)".
It derives from the aforementioned provision that, unlike the ordinary appeal, the extraordinary appeal for review is not intended to review the legal arguments relied on by the authority in its decision but is aimed at reviewing and remedying, if necessary, defects in the processing of the administrative proceeding.
Unfortunately, nowadays, many users have chosen to file extraordinary appeals for review when what they are really requesting is to review the existence or not of the risk of confusion between two trademarks. And this is usually done as a way of demonstrating dissatisfaction with the decision issued through second instance decisions. An example of this can be found in case No. SENADI-2016-92900, in which SENADI admitted to process an extraordinary appeal for review against a decision denying an appeal in which the opposition filed was accepted, and the registration of a trademark was rejected. Within the aforementioned extraordinary appeal for review, the arguments used to request the revocation of the decision were:
- Comparison between the confronted trademarks and the supposed absence of risk of confusion.
- Absence of spelling and phonetic similarities between the conflicting marks.
- Lack of competitive connection between the protected goods.
It is evident that the grounds for the aforementioned extraordinary appeal for review are not related to those provided for in Article 232 of the COA and what the applicant is seeking is to review again a decision that has already exhausted all administrative instances.
We will have to wait for the final decision of SENADI to have a clearer vision of its criteria in this matter. However, it is to be expected that the authority will reiterate the aforementioned criterion, rejecting the extraordinary appeal for review at the time of issuing the final decision (although it should have done it at the admissibility stage), thus putting an end to this practice. If so, with this precedent, SENADI should not admit to process these kinds of appeals in the future, since it is extremely important that the extraordinary nature of the appeal for review is respected in order to safeguard legal certainty and avoid its use as a kind of third instance by the interested parties.
1. Decision OCDI-2021-230 from March 30, 2021. Proceeding 15-1516-RV-2S-RR-2018.
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