Date: 27 September 2018
Here’s another decision highlighting the importance of understanding 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 on-line vehicle marketplace, mobile.de, owned a 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 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 CJEU ruled in favour of Rezon, in the following terms:
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, on the face of it, likely to be relevant to the outcome of the application for a declaration of invalidity brought before the EUIPO and, secondly, that 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.
The case discussed above illustrates that it is worth filing any evidence that comes to light after the time limit provided for submission has expired because the EUIPO might still take such evidence into account, so long as it’s 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.