The appeal originated from the following dispute.
The appellant filed two applications for EU trade marks with EUIPO concerning a word mark and a figurative mark, seeking registration in respect of goods and services in classes 9, 16, 35, 38 and 42 of the Nice Agreement. The figurative and word marks were registered.
Afterwards, the intervener at first instance filed two applications for a declaration of invalidity of the word mark and the figurative mark, based on an earlier national mark registered for services in classes 35 and 42 of the Nice Agreement (the earlier national mark was registered also for services in class 39).
Before the Cancellation Division of EUIPO, the appellant requested that the intervener at first instance provide proof of use of the earlier national mark in question. The Cancellation Division rejected the applications for a declaration of invalidity on the ground that that evidence was not adduced.
Seised of appeals brought by the intervener at first instance against those decisions, the Board of Appeal of EUIPO, after taking into account a series of additional elements of evidence produced for the first time in the appeal, found, in each of the contested decisions, that the intervener at first instance had proved genuine use of the earlier national mark for part of the services in Class 35 of the Nice Agreement. Accordingly, it annulled the decisions of the Cancellation Division and, since the latter did not examine the likelihood of confusion, it decided to refer the cases to that Division for examination of the applications for a declaration of invalidity.
The appellant brought two actions for annulment of the contested decisions. After having ordered the joinder of the two cases, the General Court, by the appealed judgment, dismissed those actions in their entirety.
In particular, the appellant submitted that, by holding that the Board of Appeal was entitled to take account of evidence of genuine use of the earlier national mark at issue produced for the first time before it, the General Court infringed the provisions of the Regulation 207/2009 (similar provisions are established also by Regulation 2017/1001 on the European Union trade mark, currently in force).
In the judgement of 28 February 2018, the Court of Justice (First Chamber) of the EU first recalled, consistently with its case law, that the Court is not bound either by the Advocate General’s Opinion or by the reasoning on which it is based. Consequently, a party’s disagreement with the Opinion of the Advocate General, irrespective of the questions that he examines in his Opinion, cannot in itself constitute grounds justifying the reopening of the oral part of the procedure. Thus, the Court held that, having heard the Advocate General, it had all the elements necessary to rule in the case and that those elements have been debated before it.
Then, the Court pointed out that, under Article 76(2) of Regulation 207/2009 (corresponding to Article 95(2) of Regulation 2017/1001 currently in force), EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned.
In accordance with the settled case-law of the Court, it follows from the wording of that provision that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject and EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced out of time.
By stating that EUIPO ‘may’, in such a case, decide to disregard such evidence, that provision grants EUIPO broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such evidence into account.
As regards the appeal procedure, the Court has recalled that it has already held that, for the purposes of the examination of the merits of the appeal brought before it, the Board of Appeal is not only to invite the parties, as often as necessary, to file, within time limits which it sets, observations on notifications which it has sent to them, but may also decide on measures of inquiry, including the production of facts or evidence. In turn, such provisions demonstrate the possibility of seeing the underlying facts of a dispute multiply at various stages of the proceedings before EUIPO.
Thus, consistently with its case law, the Court recalled that the Board of Appeal enjoys, when examining an appeal directed against a decision of the Opposition Division, the discretion to decide whether or not to take into account additional or supplementary facts and evidence which were not presented within the time limits set or specified by the Opposition Division.
However, it cannot be inferred therefrom, a contrario, that during the examination of an appeal against a decision of a Cancellation Division, the Board of Appeal does not have such discretion. Accordingly, the Court held that the General Court did not err in law in finding that the Board of Appeal is entitled, when examining an appeal directed against a decision of a Cancellation Division, to take into account additional evidence of genuine use of the earlier mark concerned not produced within the time limits set by that division.
In this regard, consistently with its case law, the Court also recalled that, in the context of invalidity proceedings, taking facts or evidence into account which have been produced out of time is particularly likely to be justified where EUIPO considers, firstly, that the material which has been produced late is, on the face of it, likely to be relevant to the outcome of the application for a declaration of invalidity brought before it and, secondly, 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.