In the recent decision of the Court of First Instance (CFI) in the Société anonyme des eaux minerales d’Évian (Saeme) v Office for Harmonisation in the Internal Market (OHIM) – A. Racke GmbH & Co. OHG (Intervener) Case T-407/05, 6 Nov 2007, the issue was the late submission of evidence in opposition proceedings.

An opposition was filed by Saeme against the Community Trade Mark application “Revian’s” for “wine and sparkling wine”. Saeme relied upon its earlier German trade mark, “Evian”, its French and International trade mark registration and the fact that it is a well-known trade mark. The language of the proceedings was German but the French and the International trade mark registration details were in French. Saeme had the opportunity to provide the necessary translations within a four month period specifically granted to allow the submission of any additional evidence to substantiate its opposition. This was not filed and was highlighted in Racke’s defence which claimed that, as a result, there was no evidence of the validity of the French and International trade mark.

In response, Saeme submitted the full translation of the registration certificates. The Opposition Division held that Saeme’s translations were filed after the deadline and the existence and legal validity of the French and International marks had not been established. The opposition was rejected on these grounds. In addition, based on the disparity between Saeme’s mineral water and Racke’s sparkling wine, the Opposition Division also refused the claim of likelihood of confusion based on the German registration.

The Office for Harmonisation in the Internal Market (OHIM) Decision was appealed against at the Board of Appeal (BOA) and failed. The BOA stated that the Opposition Division was correct in relation to the consequences of the late submission of the translation and the disparity between the goods.

An appeal followed in the CFI. The CFI then held that Article 74(2) is clear in stating that OHIM may disregard facts or evidence that is not submitted in time. It also follows that, as a general rule, it is permissible to submit facts and evidence after the expiry of the time limits and that OHIM is in no way prohibited from taking account of facts and evidence that are submitted late. The CFI stressed that it is equally apparent from the wording of Art 74(2) that a party has no unconditional right to have late evidence taken into consideration by OHIM. Therefore Article 74(2) allows OHIM a wide discretion in relation to whether it will take late evidence into account, while requiring it to give reasons for its decision.

In this case, it seems that the BOA restricted itself to concluding that the Opposition Division was right not to consider the late submissions of the translations. However it is not clear whether the BOA exercised the discretion granted by Article 74(2) to determine whether it should take into account the late submissions, nor does it appear to have given reasons for its decision on that point. The BOA therefore infringed Article 74(2) by failing to exercise, or at least failing to explain, how it exercised the discretion granted to it.

Such procedural irregularity does not automatically annul a decision. Examination of the inferences of that infringement is necessary to establish if, in the absence of such an irregularity, whether the contested decision might have been substantively different. In this case, the evidence that was not taken into consideration might be capable of altering the substance of the decision. The decision of the BOA must therefore be annulled but it is not for the CFI to assess the evidence of the case.

This decision clarifies that the OHIM has the discretion to refuse or accept late evidence, but this discretion must be exercised with clear and transparent reasoning.