The recent General Court decision of Philip Morris Brands Sarl v EUIPO (Explosal Ltd as Intervener), serves as a useful reminder that although it is always best to submit as much evidence as you can at first instance in order to ensure it is taken into consideration, in certain circumstances new evidence can be submitted at the appeal stage if considered necessary to the EUIPO making a fully informed decision.

This case related to an invalidity action filed by Philip Morris Brands Sarl against Explosal’s figurative mark for a cigarette package, on the basis of Philip Morris’ earlier rights in its MARLBORO brand.

The Cancellation Division rejected this application at first instance, finding a low degree of similarity between the marks, and that Philip Morris had failed to submit any evidence to establish the reputation of its earlier mark under Article 8(5). Philip Morris appealed this decision, which was dismissed by the Board of Appeal, following which Philip Morris appealed to the General Court.

One of the grounds that Philip Morris based its appeal on was a criticism of the Board of Appeal for refusing to take into account the evidence of reputation and enhanced distinctiveness of its earlier trade mark, produced for the first time before it. Here, Philip Morris sought to rely on an earlier decision against the proprietor of EU figurative trade mark, SUPER ROLL, in which it was acknowledged that Philip Morris’ MARLBORO brand and the ‘roof top’ graphic element used on its packaging, had acquired a substantial reputation throughout Europe and, as such, enjoyed enhanced distinctiveness.

The General Court held that the EUIPO was not under an obligation to automatically recognise the reputation of an earlier mark solely on the basis of findings made in other proceedings. However, it did note that the EUIPO is also under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of sound administration, meaning that it must be able to make a fully informed decision when ruling on proceedings brought before it.

As the SUPER ROLL case had been brought to the Board of Appeal’s attention, and was clearly an indication that Philip Morris’ earlier MARLBORO mark might have a reputation under Article 8(5), it was genuinely relevant to the outcome of the proceedings. Recent case law requires the EUIPO to take into account decisions already taken and to consider with particular care whether it should decide in the same way or not. As such, it was held that the Board of Appeal had made a procedural error in not accepting the evidence of the earlier mark’s reputation submitted for the first time before it, if only to refute that evidence. The Board of Appeal’s decision was, therefore, annulled and the EUIPO and Explosal ordered to pay Philip Morris’ costs.