Better late than never
Tardy evidence was still admitted, writes Melanie Stevenson. C-418/16 P, mobile.de GmbH v EUIPO, CJEU, 28th February 2018
C-418/16 P, mobile.de GmbH v EUIPO, CJEU, 28th February 2018
Key points
- It is settled case law that the late submission of facts and evidence is possible
- EUIPO is given broad discretion to decide whether or not to take late evidence into account. Factors include the relevance of the evidence on the outcome of proceedings, and the stage of proceedings at the point of filing
The Appellant, mobile.de GmbH, challenged the entitlement of the Board of Appeal (BoA) to take into account proof of use of the earlier right relied on by the Applicant for invalidity, Rezon OOD, filed for the first time on appeal. The General Court (GC), and now the CJEU, has upheld the BoA’s decision.
Background
The Applicant applied to declare invalid the Appellant’s Community trade mark registrations for mobile.de word and figurative marks (registered in classes 9, 16, 35, 38 and 42) under Article 53(1) of the EU Trade Mark Regulation (EUTMR), corresponding to Article 8(1)(b) EUTMR, relying on its earlier Bulgarian registration of a figurative mark for services in classes 35 and 42. The Applicant was put to proof of use of its mark. EUIPO’s Cancellation Division considered that it had not adduced sufficient evidence and rejected the invalidity applications accordingly.
On appeal, the Applicant filed additional proof of use of its earlier mark. The BoA, taking this late-filed evidence into account, decided that the Applicant had proved genuine use of its mark in respect of advertising services for motor vehicles, and referred the cases back to the Cancellation Division for further examination. The Appellant appealed to the GC, which upheld the BoA’s decisions. The Appellant’s request to reopen the oral part of proceedings following the Advocate General’s opinion was denied.
The appeal
The Appellant appealed the GC’s decision to the CJEU on a number of grounds, including whether or not the BoA was correct, or even permitted, to take into account the proof of use filed for the first time on appeal. The Appellant contested that there was no need for this evidence to have been filed late – indeed, it predated the original invalidity applications. Moreover, in contrast to oppositions – where opponents have to carry out their evidence-gathering exercise within a prescribed, relatively short time frame – cancellation applicants face no such constraints, and so should be able to put forward their best case in full at the point of filing the invalidity action.
The CJEU dismissed these grounds of appeal. According to settled case law, EUIPO has broad discretion to accept late-filed evidence. Such evidence is more likely to be accepted where it is, on the face of it, likely to be relevant to the outcome of the proceedings, and where it is not precluded by the circumstances of the stage of the proceedings. In this case, the GC had established both that the evidence was relevant and that the proceedings were at an appropriate stage to allow for consideration of new evidence.
The remaining grounds of appeal were also dismissed as inadmissible and/or unfounded. Many amounted to a request for reconsideration of the facts, rather than a review of the points of law, and so fell outside the remit of the CJEU.
Worth the effort
If evidence becomes available after the time frame allotted for its submission, it is worth filing it. Provided that it is relevant and that the stage of proceedings does not preclude examination of further evidence, EUIPO may well take it into account.
Melanie Stevenson is a Chartered and European Trade Mark Attorney, and an Associate at Carpmaels & Ransford