The matter at hand
This case concerns an application by European Food for a declaration of invalidity of Nestlé’s trade mark FITNESS for inter alia milk, cereals, water and juices on the ground that the mark was devoid of any distinctive character or descriptive.
EUIPO’s Cancellation Division rejected the application and the Fourth Board of Appeal dismissed the appeal against this decision, rejecting additional evidence European Food had submitted for the first time before the Board of Appeal.
The General Court annulled the decision of the Board of Appeal, considering that the Board of Appeal erred in deciding that the evidence produced by European Food for the first time before the Board of Appeal did not have to be taken into consideration. EUIPO appealed this decision, arguing that it was not required to take the additional evidence into account.
The judgment of the ECJ
With reference to its judgment in OHIM/Kaul (C‑29/05 P), concerning opposition proceedings, the ECJ recalls that “no reason of principle precludes the Board of Appeal from taking into account facts and evidence produced for the first time at the appeal stage” (paragraph 36). Although it also follows from OHIM/Kaul that the time limit of four months within which an appeal must be lodged cannot be interpreted as giving the person bringing the appeal a new time limit for submitting facts and evidence in support of his opposition, the ECJ rules that “it cannot be inferred from [OHIM/Kaul] that all the evidence adduced before the Board of Appeal must be regarded as belated in all circumstances” (paragraphs 39 and 40).
The ECJ further notes that in opposition proceedings, evidence submitted for the first time before the Board of Appeal is regarded as being belated, but may, nevertheless, be taken into account, where appropriate, pursuant to Article 76(2) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark (which provides that the Office ‘may’ disregard facts or evidence which are not submitted in due time by the parties concerned). Furthermore, the ECJ recalls that it is always possible to submit evidence in time for the first time before the Board of Appeal in so far as such evidence is intended to challenge the reasons given by the Cancellation Division in the contested decision (paragraph 42). In this context, “it is for the party presenting the evidence for the first time before the Board of Appeal to justify why that evidence is being submitted at that stage of the proceedings and demonstrate that submission during the proceedings before the Cancellation Division was impossible” (paragraph 43)
Consequently, the ECJ concludes that “the General Court was correct in holding (…) that the evidence submitted for the first time before the Board of Appeal did not have to be considered to be out of time by the Board in all circumstances” (paragraph 45).
Moreover, the ECJ rules that the General Court correctly held that the specific provision in Article 50(1), third paragraph of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark – which provides that in proceedings relating to relative grounds for refusal the Board of Appeal is to limit its examination of the appeal to facts and evidence presented within the time limits set or specified by the Opposition Division – is not applicable in the context of invalidity proceedings based on absolute grounds of invalidity (paragraph 49).
As regards the discretionary power of EUIPO, the ECJ holds that Article 76(2) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark grants EUIPO a wide discretion to decide, while giving reasons for its decision in that regard, whether or not to take new evidence into account, but that the Board of Appeal is not allowed to disregard evidence solely because of its late submission (paragraphs 53 - 56). With reference to BHIM/Kaul (C‑29/05 P) and Rintisch/OHIM (C‑120/12 P), the ECJ notes that taking such evidence into account is likely to be justified “where EUIPO considers, first, that the material that has been produced late is, on the face of it, likely to be genuinely relevant and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account” (paragraph 57).
Consequently, the taking into account of new evidence submitted for the first time before the Board of Appeal is neither an unconditional right of the party submitting the evidence, nor a favour granted to that party, “but rather must result from an objective, reasoned exercise of the discretion conferred on EUIPO”.