K & L Ruppert Stiftung & Co. Handels-KG v OHIM; Natália Cristina Lopes de Almeida Cunha and others (CFI (Second Chamber); T-86/05; 12.12.07) 

The German company K & L Ruppert Stiftung & Co. Handels-KG (“Ruppert”) lodged an opposition against the registration by three Portuguese individuals of the figurative mark CORPO LIVRE.

Ruppert’s opposition was based on Article 8(1)(b), submitting a likelihood of confusion with two earlier marks: (i) the German work mark LIVRE in class 25; and (ii) the international word mark LIVRE with effect in Austria, France and Italy.

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 submitted a fax at 16:56pm 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.

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 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 poof of use of the earlier marks.

The BoA upheld the Opposition Divisions decision and Ruppert appealed to the CFI making the following submissions:

i) Misapplication of Rule 71 in conjunction with Rule 22 of Regulation 2868/95.

The CFI found that Rule 71 does not provide an automatic extension of a time-limited period. It is for the party making the request who must provide OHIM with the circumstances that make an extension appropriate and in each case OHIM must remain impartial and consider the advantage such an extension may give one party over the other.

ii) Failure to apply Article 73 of Regulation 40/95 by failing to provide reasons why the request for an extension was refused.

The CFI stated that Ruppert could not criticise OHIM for failing to provide reasons why the extension was denied as none were given by Ruppert in its request. In addition, Ruppert accepted during the hearing that OHIM is under no obligation to take into account documents submitted after expiry of the time-period.

iii) Breach of Article 74(1) of Regulation 40/95 by failing to take into account evidence of use submitted after expiry of the time-limit and failure to apply Article 74(2) of Regulation 40/94 in light of the ECJ’s decision in OHIM v Kaul (C-29/05) in which it was found that OHIM enjoys a measure of discretion in its application of time-limits. Pursuant to the judgment given in OHIM v Kaul, the CFI found that under Article 74(2) Regulation 40/94 OHIM has a measure of discretion as regards evidence submitted after an expiry of a time-limit, however, there is no unconditional obligation to exercise such discretion.

iv) Breach of Rule 71(2) Regulation 2868/95 by failing to refer the question of extension of the time-limit to the other party. Rule 71(2) does not provide a single condition sufficient for the extension of a time-period, but adds another condition to those described in Rule 71(1) that must be satisfied.

The CFI found that OHIM correctly applied the legal conditions relating to requests for an extension of time-limits and the appeal was dismissed.