The matter at hand

Ferrer filed an opposition against an EU trade mark application on the basis of its earlier Spanish trade mark. The Board of Appeal rejected the opposition on the ground that the existence and validity of the earlier Spanish trade mark had not been sufficiently substantiated within the period prescribed.

In the appeal brought before it, the General Court annulled this decision considering that the Board of Appeal had failed to exercise its discretion to take account of evidence on the validity of the earlier Spanish trade mark which had been produced before the Board of Appeal for the first time. EUIPO appealed this decision before the ECJ.

The judgment of the ECJ

The ECJ holds that Rule 50 of the Implementing RegulationCommission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation [EC] No 40/94 on the Community trade mark as amended by Commission Regulation [EC] No 1041/2005 of 29 June 2005. extends the discretion of the Boards of Appeal to additional or supplementary evidence produced before the Boards of Appeal for the first time, but not to new evidence (paragraph 27).

Accordingly, the ECJ rules that “the General Court erred in law (…) by holding that the Board of Appeal had failed to exercise the discretion conferred on it to decide whether or not it was appropriate to take additional evidence into consideration” (paragraph 28).

The ECJ, however, continues that it follows from settled case-law that where the grounds of a judgment of the General Court disclose an infringement of EU law whereas the operative part of the judgment is shown to be well founded for other legal reasons, the appeal must be dismissed after all (paragraph 29).

Considering that the General Court also relied on the fact that the Board of Appeal had rejected the evidence at issue without examining whether it could be regarded as being ‘supplementary’ instead of ‘new’, the ECJ concludes that the appeal must be dismissed (paragraphs 30 and 31).