Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) v Kaul GmbH.
Date: 2007-03-13
42. Contrary to OHIM’s submission, it results from such wording 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 40/94 and that OHIM is in no way prohibited from taking account of facts and evidence which are submitted or produced late.
43. However, it is equally apparent from that wording that a party has no unconditional right to have facts and evidence submitted out of time taken into consideration by OHIM. In stating that the latter ‘may’, in such a case, decide to disregard facts and evidence, Article 74(2) of Regulation No 40/94 grants OHIM a wide discretion to decide, while giving reasons for its decision in that regard, whether or not to take such information into account.
44. Where OHIM is called upon to give judgment in the context of opposition proceedings, 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.
48. By preserving, nevertheless, the possibility for the department called upon to make a decision in a dispute of taking into account facts and evidence submitted late by the parties, that interpretation 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. As the Court has already held, reasons of legal certainty and sound administration speak in favour of that approach (see, in particular, Case C‑104/01 Libertel [2003] ECR I‑3793, paragraph 59).
The nature of the proceedings followed before the Board of Appeal of OHIM and Article 62(1) of Regulation No 40/94
49. Second, no reason of principle related 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 giving judgment on the appeal before it, from taking into account facts and evidence produced for the first time at the appeal stage.
52. As stated in Article 63(2) of Regulation No 40/94, the Court of First Instance may annul or alter a decision of a Board of Appeal of OHIM only ‘on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of [the] Regulation or of any rule of law relating to their application or misuse of power’.
53. It follows, in particular, from that provision that the Court of First Instance may annul or alter a decision against which an action has been brought only if, at the time the decision was adopted, it was vitiated by one of those grounds for annulment or alteration. The Court of First Instance may not annul or alter that decision on grounds which come into existence subsequent to its adoption (Case C‑416/04 P Sunrider  v OHIM  [2006] ECR I‑4237, paragraphs 54 and 55).
54. It is also apparent from that provision that, as found by the Court of First Instance in a correct and consistent manner, facts not submitted by the parties before the departments of OHIM cannot be submitted at the stage of the appeal brought before that Community court. The Court of First Instance is called upon to assess the legality of the decision of the Board of Appeal by reviewing the application of Community law made by that board, particularly in the light of facts which were submitted to the latter (see, to that effect, Case C‑214/05 P Rossi  v OHIM  [2006] ECR I‑7057, paragraph 50). By contrast, that Court cannot carry out such a review by taking into account matters of fact newly produced before it.
55. In accordance with the logic of the institutional architecture referred to in paragraphs 50 and 51 of this judgment, the judicial review thus exercised by the Court of First Instance cannot consist of a mere repetition of a review previously carried out by the Board of Appeal of OHIM.
56. It follows, in that regard, from Article 62(1) of Regulation No 40/94 that, following the examination as to the merits of the appeal, the Board of Appeal is to decide it and that, in doing so, it may ‘exercise any power within the competence of the department which was responsible for the decision appealed’, that is to say, in the present case, give judgment itself on the opposition by either rejecting it or declaring it to be founded, thereby either upholding or reversing the contested decision.
57. It thus follows from Article 62(1) of Regulation No 40/94 that, through the effect of the appeal brought before it, the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact.
58. As pointed out by Kaul, it also follows from Articles 61(2) and 76 of Regulation No 40/94 that, 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 on communications issued by itself and that it may also order preliminary measures, among which feature the submission of matters of fact or evidence. Article 62(2) of Regulation No 40/94 states that if the Board of Appeal remits the case for further prosecution to the department whose decision was appealed against, that department is to be bound by the ratio decidendi of the Board of Appeal, ‘in so far as the facts are the same’. In turn, such provisions demonstrate the possibility of seeing the underlying facts of a dispute multiply at various stages of the proceedings before OHIM.
Articles 42(3) and 59 of Regulation No 40/94
63. It follows from paragraphs 41 to 43 of this judgment that, where, as in the present case, such facts and evidence have not been submitted and produced by the party concerned within the time‑limit set to that end under the provisions of Regulation No 40/94, and thus not ‘in due time’ within the meaning of Article 74(2) of that regulation, that party does not enjoy an unconditional right to have such information taken into account by the Board of Appeal. On the contrary, that board has a discretion as to whether or not to take such information into account when making the decision which it is called upon to give.
68. That reasoning of the Board of Appeal, which was also adopted by OHIM both during the proceedings before the Court of First Instance and in the context of this appeal, infringes Article 74(2) of Regulation No 40/94. As is apparent from paragraphs 41 to 43 of this judgment, that provision grants the Board of Appeal, when presented with facts and evidence which are submitted late, a discretion as to whether or not to take account of such information when making the decision which it is called upon to give.