Case T‑235/12

CEDC International sp. z o.o.

v

Office for Harmonisation in the Internal Market

(Trade Marks and Designs) (OHIM)

‛Community trade mark — Opposition proceedings — Application for three-dimensional Community mark — Shape of a blade of grass in a bottle — Earlier national three-dimensional mark — Genuine use of the earlier mark — Article 75, Article 76(1) and (2) of Regulation (EC) No 207/2009 — Production of evidence for the first time before the Board of Appeal — Discretion granted by Article 76(2) of Regulation No 207/2009 — Obligation to state reasons’

Summary — Judgment of the General Court (Eighth Chamber), 11 December 2014

Community trade mark — Appeals procedure — Appeal against a decision of the Opposition Division of OHIM — Examination by the Board of Appeal — Scope — Facts and evidence not produced in support of the opposition within the period prescribed for that purpose — Account taken — Conditions

Community trade mark — Appeals procedure — Appeal against a decision of the Opposition Division of OHIM — Examination by the Board of Appeal — Scope — Facts and evidence not produced in support of the opposition within the period prescribed for that purpose — Account taken — Discretion of the Board of Appeal — Absence of any provision to the contrary — Proof of use of the earlier mark

Community trade mark — Appeals procedure — Appeal against a decision of the Opposition Division of OHIM — Examination by the Board of Appeal — Scope — Facts and evidence not produced in support of the opposition within the period prescribed for that purpose — Account taken — Discretion of the Board of Appeal — Board of Appeal’s duty to state reasons

See the text of the decision. (see para. 25)

See the text of the decision. (see paras 42, 96, 97)

It is clear from the wording of Article 76(2) of Regulation No 207/2009 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 under the provisions of Regulation No 207/2009 and that OHIM is in no way prohibited from taking account of facts and evidence which are invoked or produced out of time, that is to say, after the time-limit set by the Opposition Division and, as the case may be, for the first time before the Board of Appeal. In stating that the Office ‘may’ decide to disregard facts and evidence produced out of time, Article 76(2) of Regulation No 207/2009 grants it a wide discretion to decide, while giving reasons for its decision in that regard, whether or not to take such information into account. Considerations relating to legal certainty and sound administration weigh in favour of OHIM’s having discretion to take into account facts and evidence submitted out of time by the parties. That discretion is, at least in respect of opposition proceedings, likely to contribute to ensuring that marks whose use could later successfully be challenged by means of annulment or infringement proceedings are not registered. Moreover, it is clear from the wording of Article 76(2) of Regulation No 207/2009 that the fact that a party has invoked or produced facts and evidence out of time does not confer on it an unconditional right to have those facts and evidence taken into consideration by OHIM. Any taking into account by OHIM of that additional evidence is in no way a ‘favour’ granted to one party or the other, but rather must result from an objective, reasoned exercise of the discretion conferred on OHIM by Article 76(2) of Regulation No 207/2009. The statement of reasons thus required is all the more necessary when OHIM decides to reject the evidence submitted out of time. Taking such facts or evidence into account is particularly likely to be justified where OHIM considers, first, that the material which has been produced late is, on the face of it, likely to be relevant to the outcome of the opposition brought before it and, second, 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. (see paras 44-46, 57, 60, 62)

The three-dimensional nature of a mark precludes a static, two-dimensional vision and calls for a dynamic, three-dimensional perception. Thus, a three-dimensional mark may, in principle, be perceived from a number of sides by the relevant consumer. As regards proof of use of such a mark, it must therefore be taken into account not as a reproduction of how it is viewed in two dimensions, but rather as a presentation of how it is perceived in three dimensions by the relevant consumer. It follows that presentations from the side and the back of a three-dimensional mark are, as a rule, likely to be truly relevant for the purposes of assessing the genuine use of that mark and cannot be rejected solely on the ground that they are not reproductions from the front. (see para. 65)

See the text of the decision. (see paras 71, 72)

Article 42(2) and (3) of Regulation No 207/2009 on the Community trade mark, as substantive provisions, do not contain any requirement as to the time-limit set for the opponent to provide proof of the earlier mark. Thus, the rejection of the opposition, in the absence of proof to this effect, results from an assessment on the merits of the evidence provided and not from non-compliance with a procedural time-limit. Accordingly, Article 42(2) and (3) of Regulation No 207/2009 do not affect the discretion conferred on OHIM by Article 76(2) thereof, allowing it to decide whether or not to take into account evidence produced out of time before it. Rule 22(2) of Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark provides that where the opposing party has to furnish proof of use or show that there are proper reasons for non-use, OHIM is to invite him to provide the proof required within such period as it is to specify. If the opposing party does not provide such proof before the time-limit expires, OHIM is to reject the opposition. In this respect, although, admittedly, it is apparent from the wording of Rule 22(2) of Regulation No 2868/95 that, when no proof of use of the mark concerned is submitted within the time-limit set by OHIM, the absence of genuine use of the earlier mark must, in principle, automatically be found by OHIM, such a conclusion is not, on the other hand, inevitable when proof of use has indeed been submitted within that time-limit. In such a case, and unless it appears that that evidence is irrelevant for the purposes of establishing genuine use of the mark, the proceedings are to run their course. Accordingly, OHIM is, inter alia, called upon, as provided by Article 42(1) of Regulation No 207/2009, to invite the parties, as often as necessary, to file their observations on the notifications it has sent to them or on the communications from the other parties. In such a situation, if the opposition is subsequently rejected owing to lack of sufficient proof of genuine use of the earlier mark, that rejection does not result from application of Rule 22(2) of Regulation No 2868/95, a provision that is essentially procedural, but solely from the application of the substantive provisions in Article 42 of Regulation No 207/2009. It follows inter alia from the foregoing that where evidence of use of the mark was produced within the time-limit set by OHIM under Rule 22(2) of Regulation No 2868/95, the submission of additional proof of such use remains possible after the expiry of that time-limit and OHIM is in no way prohibited from taking account of evidence submitted out of time through use of the discretion conferred on it by Article 76(2) of Regulation No 207/2009. Accordingly, the conclusion is that Rule 22(2) of Regulation No 2868/95 does not prevent the Board of Appeal from exercising the discretion conferred on it by Article 76(2) of Regulation No 207/2009 in order to take into account any supplementary evidence produced for the first time before it. (see paras 76-78, 82-86)