This article was first published on Lexis®PSL IP & IT, September 2016

IP & IT analysis: The General Court (GC) has held that the European Union Intellectual Property Office (EUIPO) Board of Appeal was incorrect to consider that evidence submitted to the Board of Appeal for the first time within invalidity proceedings was not submitted in due time. Therefore, the Board of Appeal did not have discretion, pursuant to article 76(2) of Regulation (EC) 207/2009, to disregard evidence that had not previously been submitted to the cancellation division. Andrew Butcher considers the case of European Food v EUIPO—Société des produits Nestlé.

T-476/15 :European Food SA v EUIPO (Société des produits Nestlé SA intervening)

What should IP & IT lawyers take note of?

The GC held that Regulation (EC) 207/2009 and Regulation (EC) 2868/95 do not contain any time limit for the production of evidence in relation to an application for a declaration of invalidity based on an absolute ground for refusal, and that the Board of Appeal incorrectly decided that it had discretion to disregard the evidence that was submitted to it for the first time.

In considering whether this procedural irregularity justified the annulment of the Board of Appeal's decision, the GC decided that it was conceivable that the evidence which the Board of Appeal wrongly refused to take into account had the potential to modify the Board of Appeal’s decision, since the evidence in question included, for the first time, evidence relating to the relevant point in time (namely the date on which the application for registration was filed). Most of the evidence submitted to the cancellation division post-dated the relevant point in time. Therefore, the GC annulled the Board of Appeal’s decision.

This decision of the GC appears to confirm that the rules applicable to late submission of evidence in an appeal from the Opposition Division do not apply to submission of evidence in an appeal against a decision of the Cancellation Division concerning an absolute ground for refusal. The GC has indicated that the reason for this difference in approach lies in the public interest considerations that underpin the absolute grounds of refusal.

What was this case about?

In 2001 Nestlé applied to register the word FITNESS as an EU trade mark for various food and beverage-related goods in Classes 29, 30 and 32. The application proceeded to registration in 2005. In 2011 a Romanian company, European Food SA, applied to invalidate Nestlé’s registration on the grounds that, at the time of application for registration, the mark was devoid of any distinctive character and descriptive of the goods covered by the application.

In 2013 the Cancellation Division rejected European Food’s invalidity application in its entirety, and European Food subsequently appealed the decision to the EUIPO Board of Appeal. The appeal was dismissed by the Board of Appeal in June 2015.

In August 2015 European Food applied to the GC to annul the board of appeal’s decision. In support of its application European Food put forward three pleas in law, the latter two of which relating to the descriptiveness and lack of distinctive character of the contested mark respectively. European Food’s first plea related to the Board of Appeal’s decision not to consider certain evidence that was submitted to the Board of Appeal for the first time, ie evidence that had not been submitted to the Cancellation Division. The Board of Appeal declined the opportunity to consider that evidence on the basis that it had been submitted out of time, applying (by analogy) the third subparagraph of Rule 50(1) of Regulation (EC) 2868/95 and art 76(2) of Regulation (EC) 207/2009.

What did the court decide?

The third subparagraph of Rule 50(1) of Regulation 2868/95 (as amended by Regulation (EC) 1041/2005) states as follows in relation to the examination of appeals:

'Where the appeal is directed against a decision of an Opposition Division, the Board shall limit its examination of the appeal to facts and evidence presented within the time limits set in or specified by the Opposition Division in accordance with the Regulation and these Rules, unless the Board considers that additional or supplementary facts and evidence should be taken into account pursuant to Article 74(2) of the Regulation.'

The EUIPO argued that this provision applies by analogy to appeals against a decision of the Cancellation Division. As a result, the EUIPO argued that the Board of Appeal had discretion to disregard the evidence that was submitted to it for the first time because the evidence was not submitted in due time, pursuant to art 76(2) of Regulation (EC) 207/2009. In support of this argument, the EUIPO also relied upon Rule 37(b)(iv) of Regulation (EC) 2868/95 which provides that the initial application for a declaration of invalidity must contain an indication of the facts, evidence and arguments presented in support of the grounds on which the application is based.

The GC disagreed with the EUIPO that the third subparagraph of Rule 50(1) of Regulation (EC) 2868/95 should have been applied by analogy by the Board of Appeal in this case, for two reasons. Firstly, the GC noted that the relevant provision expressly refers to appeal proceedings against a decision of the Opposition Division and not to appeal proceedings against a decision of the Cancellation Division concerning an absolute ground for refusal, and that the wording of the provision reflects the express intention of the EU legislature. Secondly, the GC held that the nature and purpose of invalidity proceedings based on absolute grounds for refusal do not permit the application by analogy of the third subparagraph of Rule 50(1) of Regulation (EC) 2868/95 to an appeal against a decision of the Cancellation Division concerning an absolute ground for refusal, and that to apply this provision by analogy would run counter to the public interest pursued by the absolute grounds for refusal (which includes preventing businesses gaining an unjustified competitive advantage through registration of descriptive trade marks).