The matter at hand

On 13 February 2012, Mr. Kosta Iliev, sought to register an EU figurative mark with the word element ‘Group Company Tourism & Travel’ for services in class 39. The application was opposed by Group OOD, claiming it was the proprietor of an identical, unregistered mark, that it had used for interstate bus transport in Bulgaria, the Czech Republic, Hungary, Poland and Slovakia.

The Opposition Division dismissed the opposition on the ground that Group OOD had not specified the applicable national law it was relying on, nor had it set out which provisions of such national law would preclude the registration of the trade mark applied for. In the subsequent appeal before the (Fourth) Board of Appeal, Group OOD included three references to Bulgarian law. The Board of Appeal nevertheless dismissed the appeal, holding that these references should have already been submitted at an earlier stage, namely before the Opposition Division. Moreover, the Board of Appeal did not accept the form in which these references were presented, as an extract to the official Bulgarian legal texts was not included.

The General Court annulled this decision, considering that the references to the Bulgarian legal provisions submitted in appeal could not be considered as new (and therefore untimely submitted) evidence, but rather as supplementary evidence to arguments previously made before the Opposition Division. The General Court also held that the Board of Appeal should have used its discretionary power to review and verify, out of its own motion, national law to establish the exact content of that legislation.

The EUIPO appealed to the ECJ, arguing that the references to Bulgarian law were correctly refused as belated evidence and, secondly, that the references did not meet the required standards.

The judgment of the ECJ

With regard to the first ground, the ECJ recalls that when evidence is produced within the time limit set by EUIPO, the presentation of supplementary evidence remains possible. Addressing the case at hand, the ECJ finds that the references to Bulgarian law are to be qualified not as ‘new’ evidence, but as supplementary, since they formed part of the evidence used to prove the acquisition and scope of protection of the non-registered Bulgarian mark.

Ruling on the second ground, the ECJ holds that an opponent is free to choose the evidence it considers useful to substantiate its opposition based on a non-registered right. The ECJ notes that neither EU trade mark legislation nor case law dictate the manner in which the content of applicable national legislation must be proven. The ECJ rules that no specific form of presentation may be imposed in this regard, as long as the invoked elements of national law allow the EUIPO to correctly and unequivocally identify the applicable law. For the purpose of such identification, the inclusion of a text of legislation originating from an official source is not (necessarily) required.