Source: EURLEX
Language: en
Format: md

Case C‑634/16 P

European Union Intellectual Property Office (EUIPO)

v

European Food SA

(Appeal — EU trade mark — Invalidity proceedings — Word mark FITNESS — Dismissal of the application for a declaration of invalidity)

Summary — Judgment of the Court (First Chamber), 24 January 2018

1. EU trade mark—Surrender, revocation and invalidity—Absolute grounds for invalidity—Registration contrary to Article 7 of Regulation No 207/2009—Time limit for the production of evidence

   (Council Regulation No 207/2009, Arts 7, 52, 57 and 78; Commission Regulation No 2868/95, Art. 1, Rule 37(b)(iv))
2. Appeal—Grounds—Grounds of a judgment vitiated by an infringement of EU law—Operative part well founded for other legal reasons—Rejection

   (Art. 256(1), second para., TFEU; Statute of the Court of Justice, Art. 58, first para.)
3. EU trade mark—Appeals procedure—Action brought against a decision of the Cancellation Division of EUIPO—Examination by the Board of Appeal—Scope—Evidence produced for the first time before the Board of Appeal—Account taken—Discretion of the Board of Appeal

   (Council Regulation No 207/2009, Arts 60, 63, 64(1), 76(2) and 78; Commission Regulation No 2868/95, Art. 1, Rule 50(1), third para.)
4. EU trade mark—Appeals procedure—Action brought against a decision of the Cancellation Division of EUIPO—Examination by the Board of Appeal—Scope—Application by analogy with Rule 50(1) of Regulation No 2868/95 in the context of invalidity proceedings on absolute grounds of invalidity—Not permissible

   (Council Regulation No 207/2009, Art. 7, 52(1) and 76(2); Commission Regulation No 2868/95, Art. 1, Rule 50(1), third para.)
5. EU trade mark—Procedural provisions—Examination of the facts of EUIPO’s own motion—Facts and evidence not submitted in time—Account taken—Power of assessment of EUIPO

   (Council Regulation No 207/2009, Art. 76(2))
6. Appeal—Grounds—Error of law relied on not identified—Ground lacking precision—Inadmissibility

   (Art. 256(1), second para., TFEU; Statute of the Court of Justice, Art. 58, first para.; Rules of Procedure of the Court of Justice, Art. 168(1)(b) and 169(2))

1. According to Article 52 of Regulation No 207/2009 on the European Union trade mark, after the registration of a mark as an EU trade mark, that trade mark may be declared invalid on application to the European Union Intellectual Property Office (EUIPO) in certain circumstances and, in particular, where that trade mark has been registered contrary to the provisions of Article 7 of that regulation. That application, in accordance with Rule 37(b)(iv) of Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark, must contain the facts, evidence and arguments submitted in support of the application. Furthermore, in accordance with Articles 57 and 78 of Regulation No 207/2009, during the course of such proceedings, EUIPO is to invite the parties, as often as necessary, to file, within the prescribed time limits, their observations and may also decide on measures of inquiry, including the production of matters of fact or evidence.

   Even if, in the context of invalidity proceedings based on absolute grounds for invalidity, no time limit is set by which to apply for the cancellation of the registration of a mark — unlike what is laid down in Article 41 of Regulation No 207/2009, on opposition to the registration of a trade mark on relative grounds for refusal, which states that the time limit for opposition shall be three months — a time limit is nevertheless set for the submission of evidence in the context of the application for a declaration of invalidity or may be set by EUIPO, by virtue of its competence to organise the procedure.

   (see paras 31, 32)
2. See the text of the decision.

   (see para. 33)
3. It follows from case-law that no reason of principle relating to the nature of the proceedings under way before the Board of Appeal or to the jurisdiction of that department precludes it, for the purpose of deciding on the appeal before it, from taking into account facts and evidence produced for the first time at the appeal stage.

   Indeed, it follows from Article 64(1) of Regulation No 207/2009 on the European Union trade mark that, through the effect of the appeal brought before it, the Board of Appeal may exercise any power within the competence of the department which was responsible for the contested decision and is therefore called upon, in this respect, to conduct a new, full examination as to the merits of the appeal, in terms of both law and fact.

   As follows from Articles 63 and 78 of Regulation No 207/2009, for the purposes of the examination as to the merits of the appeal brought before it, the Board of Appeal is to invite the parties, as often as necessary, to file observations, within a period to be fixed by the Board, on communications from the other parties or issued by itself and may also decide on measures of inquiry, including the production of factual or evidential material. Such provisions demonstrate the possibility of seeing the underlying facts of a dispute multiply at various stages of the proceedings before the European Union Intellectual Property Office (EUIPO).

   It is true that, in paragraphs 60 and 61 of the judgment of 13 March 2007, OHIM v Kaul, the Court found that Article 59 of Regulation No 40/94 on the Community trade mark, which is identical in content to that of Article 60 of Regulation No 207/2009, which lays down the conditions for bringing an appeal before the Board of Appeal, refers not to the submission of facts or evidence, but only to the filing, within a time limit of four months, of a written statement setting out the grounds of appeal and therefore cannot be interpreted as giving the person bringing the appeal a new time limit for submitting facts and evidence in support of his opposition.

   However, it cannot be inferred from the judgment of 13 March 2007, OHIM v Kaul that all the evidence adduced before the Board of Appeal must be regarded as belated in all circumstances.

   First, it is clear that the case that gave rise to the judgment of 13 March 2007, OHIM v Kaul, concerned proceedings for opposition to registration of a trade mark. In accordance with the third subparagraph of Rule 50(1) of Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark, where an appeal is directed against a decision of an Opposition Division, the Board of Appeal is to limit its examination of the appeal to facts and evidence presented within the time limits set or specified by the Opposition Division. Therefore, in that context, the evidence submitted before the Board of Appeal is regarded as being belated but may, nevertheless, be taken into account, where appropriate, pursuant to Article 76(2) of Regulation No 207/2009.

   Second, without prejudice to the special rule applicable to opposition proceedings referred to in the third subparagraph of Rule 50(1) of Regulation No 2868/95, it is always possible to submit evidence in time for the first time before the Board of Appeal in so far as such evidence is intended to challenge the reasons given by the Cancellation Division in the contested decision. That evidence is, therefore, either evidence supplementary to that submitted in the proceedings before the Cancellation Division or evidence on a new matter which could not be raised during those proceedings.

   Moreover, it should be noted that it is for the party presenting the evidence for the first time before the Board of Appeal to justify why that evidence is being submitted at that stage of the proceedings and demonstrate that submission during the proceedings before the Cancellation Division was impossible.

   Finally, the evidence submitted for the first time before the Board of Appeal may be delivered to it on its request, as measures of inquiry and within the time limits imposed on the parties.

   (see paras 36-44)
4. Although the first subparagraph of Rule 50(1) of Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark, contained in Title X, ‘Appeals’, lays down the principle that the provisions relating to proceedings before the department which has made the decision against which the appeal is brought are to be applicable to the appeal proceedings mutatis mutandis, the third subparagraph of that same provision constitutes a special rule derogating from that principle. That special rule is specific to appeal proceedings brought against the decision of the Opposition Division and specifies the rules, before the Board of Appeal, governing facts and evidence submitted after the expiry of the time limits set or specified at first instance.

   Consequently, that special rule contained in the third subparagraph of Rule 50(1) of Regulation No 2868/95 was not applicable in the context of invalidity proceedings based on absolute grounds for invalidity.

   (see paras 48, 49)
5. It can be inferred from the wording of that Article 76(2) of Regulation No 207/2009 on the European Union trade mark 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 periods governing such submission provided for in Regulation No 207/2009 and that the European Union Intellectual Property Office (EUIPO) is in no way prohibited from taking account of facts and evidence which are submitted belatedly.

   However, it is equally apparent from that wording that a party has no unconditional right to have facts and evidence which were invoked or submitted out of time taken into account by EUIPO. In stating that the latter ‘may’, in such a case, decide to disregard facts and evidence, Article 76(2) of Regulation No 207/2009 grants EUIPO a wide discretion to decide, while giving reasons for its decision in that regard, whether or not to take such information into account.

   It must be noted that taking facts or evidence into account that have been submitted out of time is likely to be justified where EUIPO considers, first, that the material that has been produced late is, on the face of it, likely to be genuinely relevant 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.

   Consequently, the taking into account 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 EUIPO by Article 76(2).

   (see paras 55-58)
6. See the text of the decision.

   (see paras 63, 64)

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