K & L Ruppert Stiftung & Co. Handels-KG v OHIM; Natália Cristina Lopes de Almeida Cunha and others (ECJ (Eighth Chamber); C-90/08; 05.03.09) (Decision not yet in English)

K & L Ruppert Stiftung & Co. Handels-KG (“Ruppert”) lodged an opposition against the registration of a figurative mark by three Portuguese individuals under Article 8(1)(b) based on earlier German and international marks. OHIM granted Ruppert an 8 week period expiring on 9 July 2002 in which to provide evidence of use of the earlier marks. On 9 July 2002, Ruppert’s representative, on the basis of Rule 71(1) of Regulation 2868/95, submitted a fax at 16:56 pm requesting an 8 week extension giving the reason that they had not yet received documents from the opposing party but would remind them to make the documents quickly available. The relevant part of Rule 71(1) allows OHIM, where appropriate, to grant an extension provided the request is submitted before the original period expired.

OHIM refused to grant the extension because the request did not provide any unforeseen or exceptional circumstances as the reason for the delay. Despite OHIM’s refusal, on 6 September 2002 Ruppert submitted documents as proof of use of the earlier marks. At the opposition proceedings, the Opposition Division did not consider the evidence submitted after the time-limit and rejected Ruppert’s opposition based on its failure to provide proof of use. The BoA and the CFI rejected Ruppert’s appeal.

Ruppert appealed to the ECJ, alleging that the CFI had:

(i) Infringed Rule 71(1). In particular, Ruppert submitted that the CFI failed to have regard to the fact that Regulation 40/94 contains no rules on possible grounds for an extension of the period specified. This argument was rejected by the ECJ on the basis that the wording of Rule 71(1) was sufficiently clear. According to Ruppert, the CFI also failed to consider that, at the material time, the Rule had not been further defined by guidelines for oppositions or other instructions from OHIM, so that no possible interpretations of the permissible grounds for extensions of the period were available. This submission was also rejected by the ECJ on the basis that there was nothing to suggest that the CFI would have interpreted the Rule differently had the CFI taken this fact into account.

(ii) Disregarded its duty to state reasons, as it did not investigate Ruppert submission that at the time of the application for an extension there were no legal rules and no basis for interpretation of the wording of requests for extensions. The ECJ held that the CFI was under no such duty. Legal rules were indeed available, i.e. Rule 71(1) itself. With regard to lack of basis for interpretation of the wording of requests for extensions, the ECJ held this submission to lack relevance, as it had already (in response to (i) above) established that there was nothing to suggest that the CFI would have interpreted Rule 71(1) differently had the CFI taken this fact into account. As reasons were attached to the request for an extension, Ruppert further submitted that the CFI should have explained the legal basis on which the reasons stated for the request for an extension were to be regarded as insufficient. However, the ECJ rejected this on the basis that the CFI was under no such duty.

(iii) Infringed Article 74(2) of Regulation 40/94 by misinterpreting that provision as meaning that OHIM had no discretion to take account of evidence adduced late in the opposition proceedings. According to Ruppert, it had failed to have regard to the fact that the BoA has a general discretion which is not excluded by the provisions of Article 43 and the second sentence of Rule 22(2) of Regulation 2868/95. The ECJ dismissed this submission, holding that, pursuant to the judgment given in OHIM v Kaul (C-29/05), the CFI had been correct to hold that under Article 74(2) OHIM has a measure of discretion as regards evidence submitted after an expiry of a time-limit, although there is no unconditional obligation to exercise such discretion.

On the basis of the above, the ECJ dismissed the appeal in its entirety.