Belated proof of genuine use may be taken into account, provided that some proof of use was already submitted previously within the time limits set

C-418/16 P v EUIPO

Procedural law: New evidence, facts or pleas

28 Feb 2018

The matter at hand

The Germany company filed applications for the EU word mark ‘’ and an EU figurative mark containing the word element ‘’, both for goods and services in classes 9, 16, 35, 38 and 42. The applications were registered by EUIPO.

The Bulgarian company Rezon filed applications to have these trade marks declared invalid, on the basis of Rezon’s earlier Bulgarian figurative mark containing the word element ‘mobile’, registered for services in classes 35, 39 and 42.

Before the Cancellation Division of EUIPO, requested that Rezon provided proof of genuine use of its earlier Bulgarian mark, with respect to classes 35 and 42. The Cancellation Division held that Rezon had not adduced such proof (partially due to some of the proof not being submitted timely) and rejected the invalidity applications.

In appeal, the First Board of Appeal overturned the decisions, finding the untimely submitted evidence admissible. brought the cases before the General Court, who dismissed the actions in their entirety, after which appealed to the ECJ, where it essentially argued that art. 76(2) of the Trade Mark Regulation does not allow evidence of genuine use to be taken into account if it was not submitted within the time limits set.

The judgment of the ECJ

The ECJ recalls that as a general rule, art. 76(2) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark allows EUIPO to disregard facts and evidence that are not submitted in due time by the parties concerned, but that, on the other hand, EUIPO is in no way prohibited from taking such facts and evidence into account and enjoys a wide margin of discretion in that respect (paragraphs 47 – 49).

As regards the submission of proof of genuine use in invalidity proceedings, the ECJ observes that although it follows from Article 57(2) and (3) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark that the Cancellation Division should reject the invalidity application if no proof of use is presented within that time limit at all, “such conclusion does not pertain […] where some evidence intended to show that use have been produced within that time limit” (paragraph 53). The ECJ clarifies that in those cases “unless it emerges that evidence is entirely irrelevant for the purpose of establishing genuine use of the earlier mark in question, the proceedings must take their course” (paragraph 54).

The ECJ rules that, as a result, “it remains possible to submit evidence of use of the mark in addition to the evidence adduced within the time period set by EUIPO” and that “EUIPO is in no way prohibited from taking account of additional evidence which is submitted after that time under the discretion conferred upon it under art. 76(2)” (paragraph 56). The ECJ holds that taking such evidence into account is likely to be justified where, on the face of it, it is likely to be relevant to the outcome of the application for a declaration of invalidity and, secondly, 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.

The ECJ dismisses the argument of that the General Court incorrectly held that the use by Rezon of the sign ‘’ constitutes use of its figurative trade mark ‘mobile’ in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered within the meaning of Article 15(1)(a) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark. The ECJ holds that the assessment the General Court made in this respect demonstrates that the General Court assessed all relevant factors, including the aural and conceptual similarity between the registered mark and the signs used and their overall impression (paragraphs 75 – 79).

Finally, the ECJ holds that the General Court was correct in holding that the Board of Appeal was entitled to refer the examination of the applications for declarations of invalidity back to the Opposition Division, considering “that the question concerning the proof of [genuine] use had to be settled before a decision is taken on the application for a declaration of invalidity and, is, therefore, in that sense, a ‘preliminary issue’” (paragraph 88).

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