This decision highlights how important it is to understand the rules concerning an applicant’s request for proof of use from the opponent, and when additional evidence can be filed (mobile.de GmbH v EUIPO; C-418/16 P).

 

Germany’s largest online vehicle marketplace, mobile.de, owned a European Trade Mark (EUTM) for the word “mobile.de” and the figurative mark shown below in classes 9, 16, 35, 38 and 42.

 

 

Rezon OOD, the largest group of specialized media outlets in Bulgaria, filed two applications for declarations of invalidity against the two EUTMs, on the basis of an earlier Bulgarian trade mark registration for the figurative mark shown below, registered for services in classes 35, 39 and 42.

 

 

Rezon was asked to submit evidence to demonstrate genuine use of the earlier national mark. The applications for a declaration of invalidity were rejected by the Opposition Division on the ground that the evidence was not adduced. However, following an appeal by Rezon, the Board of Appeal took into account additional evidence produced before the appeal board and found that, in each of the contested decisions, Rezon had proved genuine use of the earlier national mark for certain advertising services in Class 35. Accordingly, the Board annulled the Cancellation Division’s decisions.

 

The German applicant appealed to the General Court (GC), which ordered that the two cases be joined and dismissed the actions in their entirety. In response, Mobile.de lodged an appeal against the GC’s ruling and argued that it had erred in law by holding that the Board of Appeal was entitled to take account of evidence of genuine use produced for the first time before it.

 

However, the Court of Justice of the European Union (CJEU) ruled in favour of Rezon, in the following terms:

• Under Article 95(2) of the European Union Trade Mark Regulation No 2017/1001, the European Union Intellectual Property Office (EUIPO) may disregard facts or evidence which are not submitted in due time by the parties concerned.
• The EUIPO was in no way prohibited from taking account of facts and evidence which are submitted or produced out of time.
• The EUIPO had a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such evidence into account.
• The board 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.
• The board enjoyed 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 from this that during the examination of an appeal against a decision of a Cancellation Division, the Board of Appeal does not have such discretion.

 

It followed that the GC had not erred in law by finding that the Board of Appeal was 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.

 

The CJEU also recalled that taking facts or evidence into account which had been produced out of time was particularly likely to be justified where that the material was likely to be relevant to the outcome of the application for a declaration of invalidity brought before the EUIPO. Secondly, the stage of the proceedings at which that late submission took place and the circumstances surrounding it did not argue against such matters being taken into account.

 

Practical consideration

 

The case discussed above illustrates that it is worth filing any evidence that comes to light after the deadline for submission has passed because the EUIPO might still take such evidence into account.

 

However, they are only likely to do so in the following circumstance:

• The evidence is likely to be relevant to the outcome, and
• 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.

 

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