The late submission of evidence in opposition proceedings against the registration of a trademark: a recent decision of the General Court of the European Union

By decision of 1 July 2014, the General Court of the European Union (“GCEU”) gave judgement regarding the late submission of evidence in opposition proceedings against the registration of a trademark. In this case, the opponent did not provide evidence of ownership of the earlier trademark within the prescribed term in the first instance (which was therefore rejected), but provided the evidence in the appeal proceedings. However, the opponent obtained yet another rejection on the basis of the expiry of the above-mentioned term.

In particular, the Board of Appeal stated that “the ability to submit facts and evidence after the expiry of the periods specified is conditional upon there being no provision to the contrary. It is only if that condition is met that the Office for Harmonization in the Internal Market (“OHIM”) has the discretion, attributed to it by the Court of Justice when interpreting Article 76(2) of Regulation No. 207/2009, as regards the taking into account of facts and evidence submitted out of time”. In the Board of Appeal’s opinion, a provision to the contrary existed in this case that was inferable from the interpretation of Rule 20(1) in co-ordination with Rule 19 of Regulation No. 2868/1995: “Pursuant to these provisions, in the absence of proof of the existence, validity and scope of protection of the earlier mark, as well as the opponent’s entitlement to file the opposition, the rejection of the opposition is mandatory (“shall” be rejected), and not merely an option for OHIM”.

The opponent therefore filed a claim to the GCEU against the decision of the Board of Appeal.

With the decision under review, the GCEU firstly explained that, contrary to the opponent’s claims, pursuant to art. 65(3) of Regulation No. 207/2009, it could not pronounce any declaring judgment (in this case: on the actions of OHIM), being able only to cancel or reform the contested decision, nor could it order OHIM to do anything (in this case: to examine the reasons of opposition), OHIM being directly obligated, pursuant to art. 266 TFEU and art. 65(6) of Regulation No. 207/2009, to comply with the decisions of the GCEU. Hence the opponent’s claims were inadmissible.

The GCEU then examined the question of the late submission of evidence. With regard to this question, the GCEU preliminary asserted that “it follows from the wording of… [omitted] …Article 76(2) of Regulation No. 207/2009, that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject and that OHIM is in no way prohibited from taking account of facts and evidence that are submitted or produced late”. In particular and contrary to the decision of the Board of Appeal, “Rule 20(1) of Regulation No. 2868/95 does not preclude the Board of Appeal from using its discretion under Article 76(2) of Regulation No. 207/2009 in order to take account of facts and evidence submitted or produced late”.

In conclusion, the GCEU therefore annulled the contested decision, confirming that OHIM has the ability to decide, exerting its discretion, whether or not to take into account facts and evidence filed late.