The Court of Justice of the European Union (ECJ), in a series of seven judgments rendered in July, September and October 2013, clarified the rules applicable to late submission of evidence in opposition and cancellation proceedings before OHIM – “late” in this context refers to submission of evidence by a party to the proceedings outside of the time limit set by OHIM for the submission of such evidence. The cases are the three Rintisch cases reported here, two Centrotherm cases decided in September 2013 (cf. separate Report), and the New Yorker SHK Jeans case, decided in July 2013 (also reported separately).

In the three Rintisch cases decided on October 2013, the opponent, Rintisch, failed to provide proper evidence for the continued validity (renewal) of the marks relied on in three separate opposition proceedings, within the time limit set by the Opposition Division in accordance with the Rules of the Implementing Regulation. Such evidence was however submitted later.

The Opposition Division had dismissed the oppositions and the Board of appeals confirmed the dismissal, considering that the late submission required the oppositions to be dismissed. The Board added that if it did have any discretion in this respect, it would have exercised it by refusing the late evidence. Appeals to the General Court were dismissed as unfounded, the General Court holding that under the applicable rules, notably Rule 20 (1) CTMIR, OHIM did not have any discretion whether or not to accept the late evidence. The 2007 Kaul judgment (C 29/05 P) which had established the principles applicable to the acceptance of late evidence had made an explicit exception for cases where the relevant legislation provided “otherwise”, i.e. precluded of itself the acceptance of late evidence.

The ECJ confirmed the rejection of the oppositions by OHIM, albeit on grounds different from those of the General Court.

The ECJ concluded that the General Court had committed an error by holding that OHIM’s Board of Appeal did not have any discretion in this case because the third subparagraph of Rule 50 (1) CTMIR expressly mandated such exercise in opposition proceedings:

“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 (…), 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 Court nevertheless confirmed the decisions of the Board of Appeal, finding that the Board had properly justified its exercise of discretion. The following paragraphs, found in all three judgments, explain why the refusal was appropriate:

(39) In that regard, the Court has held, inter alia, that where OHIM is called upon to give judgment in the context of opposition proceedings, taking into account facts or evidence produced late is particularly likely to be justified where OHIM considers, first, that the material which has been produced late is, on the face of it, likely to be genuinely relevant to the outcome of the opposition brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account (OHIM v Kaul, paragraph 44, and Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, paragraph 113).

(40) In this case, since Mr Rintisch based his opposition, inter alia, on three registered German marks, the evidence of the existence, validity and scope of protection of those marks which he had to submit during the opposition proceedings is set out precisely and exhaustively in Rule 19 (2) (a) (ii) of the Implementing Regulation. Mr Rintisch was therefore deemed to be aware, even before filing his opposition, of the precise documents which he had to produce in support of it. Consequently, the Board of Appeal must, in those circumstances, exercise its discretion restrictively and may allow the late submission of such evidence only if the surrounding circumstances are likely to justify the appellant’s delay in the submission of proof required of him.

(41) In stating the reasons for its decision, the Board of Appeal emphasised in particular that Mr Rintisch was in possession of the proof of renewal of the marks at issue as from 15 January 2007 and that he did not put forward any reasons why he withheld that document until October 2007.

(42) It is therefore apparent from the contested decision that the circumstances surrounding the late submission of the evidence of the existence, validity and scope of protection of the marks at issue are not capable of justifying the appellant’s delay in the submission of proof required of him.

(43) The fact that Mr Rintisch produced, within the time-limit set by the Opposition Division, extracts from the Deutsches Patent- und Markenamt online register referring to the renewal of the marks at issue, in a language other than that of the language of the proceedings, cannot call in question that analysis, since it is clear from Rule 19 (4) of the Implementing Regulation that OHIM must not take into account documents that have not been submitted, or that have not been translated into the language of the proceedings, within that time-limit.

(44) It follows that the Board of Appeal was justified in refusing to take into account the evidence submitted by Mr Rintisch after the expiry of the periods specified for that purpose by the Opposition Division, and there was no need for it to rule on the possible relevance of that evidence or to determine whether the stage of the proceedings at which that late submission takes place precludes such evidence from being taken into account.

(45) Contrary to Mr Rintisch’s claims, the Board of Appeal is not required, when exercising its discretion under Article 74 (2) of Regulation No 40/94, to examine the three criteria referred to in paragraph 39 above when one of those criteria alone is sufficient to establish that it must not take into account the evidence submitted late at issue (see, to that effect, order of 4 March 2010 in Case C 193/09 P Kaul v OHIM, paragraph 38).

Remarks

The Rintisch cases confirm the principles previously established by the ECJ, notably in the famous 2007 Kaul case (C-29/05 P), namely that evidence submitted in opposition proceedings after expiry of a time limit set for such submission is not necessarily categorically excluded. The Kaul case concerned evidence of use to established an enhanced degree of distinctiveness. The recent judgments of the ECJ concerned proof of use and evidence of earlier rights.

For proof of use in opposition proceedings, the ECJ has established that Rule 22 (2) CTMIR, which mandates rejection of an opposition when no proof of use is provided within the time limit set by OHIM, applies only when no evidence is submitted. If some relevant evidence is provided, the opponent may not be entirely precluded from providing additional evidence, either before the Opposition Division, or even before the Board of Appeal. The acceptability of such evidence must be judged under the Kaul standards, notably relevance and circumstances surrounding the “late” submission. The ECJ so held in the NewYorker SHG Jeans judgment of July 18, 2013, reported separately, a case involving additional evidence submitted to the Opposition Division, i.e. in first instance. In opposition proceedings, when additional proof of use is submitted to OHIM’s Boards of Appeal, they must evaluate the acceptability of additional or supplementary evidence (also) under Rule 50 (1) CTMIR. This was expressly decided by the ECJ in the three Rintisch cases. For proof of use in opposition cases this does not add much because of the interpretation of Rule 20 (2) CTMIR just explained.

For proof of use in non-use revocation actions, where Rule 40 (5) CTMIR parallels Rule 20 (2) CTMIR, the result is the same as for opposition cases. This applies even in the absence of a provision such as Rule 50 (1), third subparagraph, which is expressly limited to opposition proceedings. The first of the Centrotherm cases (C-609/11 P), reported separately, where additional proof of use was submitted to the Board, confirms this result

The Rintisch cases concern evidence regarding the existence and continued validity of earlier marks relied on in opposition proceedings, where Rule 20 (1) CTMIR seems to mandate a rejection of the opposition by the first instance when the evidence is not sufficient. For the Board of appeal, Rule 50 (1) mandates that such evidence must be taken into account. It may thus appear incongruent that such evidence may be admitted by the Board, but not by the first instance. It remains to be seen whether OHIM will extend the admissibility of additional evidence also for first instance proceedings, which would appear logical but not easy to square with the applicable Rules.

In all situations where in principle new evidence is not excluded the relevant instance – Opposition or Cancellation Division, Board of Appeal – must exercise their discretion under the Kaul standards – primarily relevance, absence of delay. Thus, as the three Rintisch cases show, it may turn out that even relevant evidence may be disregarded. It is very risky for parties to OHIM proceedings to rely on the possibility of a second round, both as regards proof of use, but even more so as regards evidence of existence of earlier rights.

We also refer to the Remarks to the New Yorker SHK Jeans case and the Centrotherm cases.