Concurrence in the appeal before the Administrative Court: diverging paths

Fresh winds blow in the treatment of concurrence briefs in the appeal before the Administrative Court. In recent resolutions and without further explanation supporting the change of criterion, the authority has apparently decided to vary the prevailing considerations for allowing the concurrence briefs in the appeal to proceed without a modification of the regulations in force since 1999.

Background
We bring up a case in which, formally allowed the concurrence in the appeal filed together with the brief answering the appeal, complying with the requirement which establishes that the party that concurs must not have resulted defeated with the resolution being appealed by the other party, but simply not have obtained full satisfaction with respect to its claim(s) (since the opposite would mean protecting a negligent attitude of the defeated party of questioning the judgment despite having leave the term pass for appealing the judgment), one and a half months later another court order was issued leaving without effect the prior court order which had allowed the concurrence in the appeal. According to this second court order, it was stated that “considering that only one of the opponent’s main claims was sustained (the one related to the registration prohibition established in Article 136, paragraph a) of Decision 486 {Family of trademarks}), having said party resulted defeated with respect to its opposition in the referred parts in which the Trademark Office determined that the prohibition established in Articles 136 paragraph h) and 137 of Decision 486 was not applicable, it corresponded that in the term granted for said purpose, said party, if not satisfied, filed appeal against the mentioned parts of Resolution Nº 2706-2018/CSD-I NDECOPI of May 24, 2018. Therefore, since one of the requirements for concurring in the appeal is that the party has not resulted defeated with the resolution appealed by the other party, it corresponds to DISMISS the petition for concurrence filed by the opponent against Resolution No. 2706-2018/CSD-I NDECOPI of May 24, 2018 in the parts that the Trademark Office determined that the registration prohibition established in Articles 136 paragraph h) and 137 of Decision 486 was not applicable.”

It calls the attention that the considerations established in the commented court order literally gloss the same rules and reasoning stated in the first court order that decided to formally allow the concurrence in the appeal filed together with the brief answering the appeal, but that, nonetheless, a decision is rendered in the opposite sense.

After the opponent filed the corresponding petition in error for procedural defects, the Administrative Court decided to declare groundless said petition; consequently, the proceeding had to continue without allowing the concurrence in the appeal to proceed.

In the commented case, the opponent filed opposition based of the following causes of registration prohibition established in Decision 486: (i) the cause establish in Article 136, paragraph a) related to confusion risk due to the existence of a Family of trademarks; (ii) the cause established in Article 136, paragraph h) related to the reproduction of a notoriously known mark; and (iii) the cause established in Article 137 related to bad faith of applicant’s behavior. The Trademark Office, in its first instance resolution, declared grounded the opposition only with respect to the cause of prohibition established in Article 136, paragraph a) of Decision 486, and declared it groundless in the parts related to the reproduction of a notoriously known mark and bad faith of applicant’s behavior. Applicant appealed said resolution and upon notification of the appeal, the opponent when answering the appeal concurred in the appeal with respect to the other two parts in which the trademark authority declared groundless the opposition.

It is deduced from the above-mentioned that the opponent did not result defeated with the resolution being appealed by the other party but simply did not obtain full satisfaction of its claims, according, in principle, to the regulations in force.

What do regulations in force say in this regard?
The Administrative Court approved by decision of all its members, on September 1, 1999, the Directive No. 002-1999/TRI-INDECOPI containing the criteria for prosecuting the brief of concurrence in the appeal, establishing in its preamble that the agreed interpretation of the rules which regulate the brief of concurrence in the appeal has created confusion about their application to the administrative proceeding followed before the Administrative Court, causing discrepancies and divergent criteria among the parties in the proceeding, particularly regarding if the referred brief was allowable at the administrative instance, and if applicable, which were the requirements for its allowance to proceed and the form in which it should be prosecuted. Formerly, the brief of concurrence in the appeal was allowed as result of additional application of the rules of the Code of Civil Procedure in which this legal concept has long standing.

To overcome these inconveniences, the Directive No. 002-1999/TRI-INDECOPI in its article two, established as requirements of allowance and admissibility of the brief of concurrence to the appeal the following:

a. The existence and effectiveness of an appeal brief.
b. Who considers the concurrence must be the appellee.
c. Who concurs must not have resulted defeated with the resolution being appealed by the other party, but simply not have obtained full satisfaction with respect to its claim(s), since the opposite would mean protecting a negligent attitude of the defeated party of questioning the judgment despite having leave the term pass for appealing the judgment.
d. The allowance and admissibility requirements established in the Consolidated Text of Law No. 27444 and other additional rules, if applicable.”

In application of said Directive and since 1999 briefs of concurrence in the appeal were being allowed to proceed; nevertheless, the allowance was then dismissed by virtue of the resolution which is subject of comment. After this decision, other decisions have been rendered in other cases which have followed the new criterion.

What happened on the way?
Without modification of the current regulations, the Authority simply decided to vary its criterion to interpret that the phrase “must not have resulted defeated with the resolution being appealed by the other party, but simply not have obtained full satisfaction with respect to its claim(s)” implies that the party that obtained an unfavorable decision with respect to any of its claims (one out of three as it occurred in the mentioned case) leads to understand that it was defeated in the claims in respect of which the opposition was declared groundless (two out of the three as occurred in the commented case) and not only that it had not obtained full satisfaction of said claims; thus, in the Authority’s opinion an appeal should have been submitted with respect to the parts in which the decision was unfavorable, since the opposite would mean protecting a negligent attitude of the defeated party of questioning the judgment despite having leave the term pass for appealing the judgment.

In other words, applying the same regulations and the same considerations which in reiterated cases were considered in past resolutions, now a decision is rendered in the opposite sense, without the issuance or approval of any effective modifying rule that alters the status quo, which in the Peruvian forum is called Vidaurre vs. Vidaurre referring to the title of a work of this eminent jurist, wherein by changing his thoughts he tried to regret of its radical secularism. Only that in the commented case it has not been duly explained to the parties the reasons for this change of criterion.

Opinion on this subject
In our opinion, a decision has been rendered against the sense of the rule, going off the literal sense of the Directive. Moreover, if we refer to footnote on page 19 written precisely with respect to paragraph c of article 2 of the Directive No. 002-1999/TRI-INDECOPI, it can be noticed that, resorting to doctrine and to a rational, theological and systematic interpretation of the concept of concurrence in the appeal, its ratio legis is precisely giving the party, which despite obtaining a judgment partially favorable did not obtain full satisfaction of its claims and did not want to appeal in order not to postpone more the solution to the controversial matter, the opportunity of questioning the part in which it was not satisfied when the other party files the appeal; this allows that those claims which were not completely satisfied be revised in an upper instance.

The referred footnote on page 19 textually states the following:

“Loutayf ((note 14), pp.291 and ss.) considers that this requirement is justified taking into consideration that in order that the party may express its complaint it is necessary that the party may have resulted defeated in something. On the contrary, if the party results winner in everything, it does not have a reason for feeling affected and must limit itself to answer the complaint of the other party. Moreover, a sector of doctrine believes that the concurrence in the appeal is an institution granted to the party to whom the judgment has resulted partially unfavorable so that said party expresses its complaint in the upper instance, when said party did not want to appeal as main and original recourse, in order not to delay the prosecution and obtain the judgment.
Ortiz and Pinilla add that concurrence in the appeal is configured when the party winning in first instance, but whose claims have not been totally satisfied, tries to obtain full satisfaction for its claims by concurring in the appeal filed by the defeated party. Casarino states that concurrence in the appeal means that the first instance decision affects in part the party which concurs, and that the latter, prima facie, is satisfied with it, but later, when the other party appeals, also desires that said decision be amended in the part or parts which are prejudicial to the concurring party. Cited by Hinostroza (note 15), pp.142 et seq.”

Conclusions and recommendations
In spite of the clarity of the ratio legis of Directive No. 002-1999/TRI-INDECOPI itself, as well as of the procedural doctrine in the matter, the Authority has noticed a change of criterion in the interpretation of the rule that varies the application that it has had in almost twenty years of formal validity and of its application in a determined sense. This change of criterion practically leaves inoperative the concurrence brief in the appeal that now only can be admitted exceptionally. At least in oppositions to trademark registrations this recourse almost disappears in the practice. The parties in the proceeding, looking for protection, should expressly and formally appeal all parts of the resolutions in which their claims are not fully satisfied, since they can no longer be reviewed in a concurrence brief in the appeal. As a consequence thereof, the work of solving conflicts in the upper instance will be unnecessarily loaded since previously the party which claims had not been completely satisfied, most of the time did not file appeal with respect to those rejected claims since by denying the trademark registration for any other reason the final purpose of the opposition was met; thus, if the other party decided not to appeal the resolution that declared partially grounded the opposition, the decision denying the registration became consented and the proceeding ended earlier saving time and money to the parties in the proceeding and to the authority. If the defeated party appealed the resolution, then by means of a concurrence in the appeal, the party which did not obtain full satisfaction of its claims could have reviewed by the upper authority those claims in which its opposition was not sustained.

It is expected that either this mistaken way of acting is rectified in some process seeking the judicial review of the administrative decision which questions this new interpretation of the same rule, thus evidencing the contradictory performance of the administrative authority; or that by agreement of all the members of the Administrative Court a new Directive is rendered modifying the former Directive and including the new established criterion duly sustaining it, so that the administrative decisions comply with the predictability principle that the parties expect in the prosecution of a proceeding before the Administrative Court.

Gustavo Leon y Leon