Centrotherm Systemtechnik GmbH v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
Date: 2013-09-26
32. It will be apparent from the discussion of the background to the case set out in paragraph 14 of this judgment that, although the revocation proceedings in question were brought pursuant to Regulation No 40/94, the contested decision was delivered by the Board of Appeal of OHIM after Regulation No 207/2009 entered into force.
33. However, since the latter regulation merely codified Regulation No 40/94 and the relevant provisions thereof did not undergo any amendment in the course of that codification, references will be made only to Regulation No 207/2009 in the discussion below.
Consideration of the first ground of appeal: infringement of Article 51(1)(a) of Regulation No 207/2009
Arguments of the parties
44. It should, moreover, be borne in mind that the assessment of the facts and evidence and, in particular, the probative weight to be given to the sworn statement produced by Centrotherm Systemtechnik, conducted by the General Court for that purpose, comes within the scope of the facts of the case (see, to that effect, Case  C‑234/06 P Il Ponte Finanziaria  v OHIM  [2007] ECR I‑7333, paragraph 75) and, save where they are distorted, are accordingly not a question of law which is subject to review by the Court of Justice on appeal.
54. Recital 10 in the preamble to that regulation makes it clear that the European Union legislature intended to make the preservation of the rights connected to the trade mark conditional upon it actually being used. A Community trade mark which is not used could obstruct competition by limiting the range of signs which can be registered as trade marks by others and by denying competitors the opportunity to use that trade mark or a similar one when putting onto the internal market goods or services which are identical or similar to those covered by the mark in question (see Case C‑149/11 Leno Merken  [2012] ECR I-0000, paragraph 32).
63. Thus, it may be inferred from a combined reading of Articles 15, 42(2), 51(1) and 57(2) of Regulation No 207/2009 that, in proceedings for revocation of a mark, it is for the proprietor of the mark, and not OHIM of its own motion, to establish genuine use of that mark.
77. According to the case‑law of the Court of Justice, it results from the wording of that provision 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 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 submitted or produced late ( OHIM  v Kaul , paragraph 42).
78. In stating that OHIM ‘may’ decide to disregard such facts and evidence, Article 76(2) of Regulation No 207/2009 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 ( OHIM  v Kaul , paragraph 43).
86. In that regard, although it does follow from the wording of that provision that, where no proof of the use of the mark in question is produced within the time period set by OHIM, it must, as a rule, revoke the mark of its own motion, this is not required where evidence of that use is produced within that time.
87. In that case, unless it emerges that that evidence is entirely irrelevant for the purpose of establishing genuine use of the mark, the proceedings must take their course. OHIM must inter alia, as provided for by Article 57(1) of Regulation No 207/2009, invite the parties, as often as neces sary, to file observations on communications from the other parties or issued by OHIM itself. Should those proceedings subsequently lead to revocation of the mark, it will not be as a result of the application of Rule 40(5) of Regulation No 2868/95, which is an essentially procedural provision, but solely of the application of the substantive provisions in Articles 51(1) and 57 of Regulation No 207/2009.
88. It follows inter alia from the foregoing that, as observed in paragraph 77 above, it remains possible to submit evidence of use of the mark in addition to the evidence adduced within the time period set by OHIM under Rule 40(5) of Regulation No 2868/95 after expiry of that time limit and that OHIM is in no way prohibited from taking account of additional evidence which is submitted after that time.
110. Such general, categorical assertions do not in any way establish that the Board of Appeal effectively exercised the discretion conferred on it by Article 76(2) of Regulation No 207/2009, in order to decide, in giving proper reasons and taking account of all relevant facts, whether or not to take into account the additional evidence submitted to it in order to make the decision it is called upon to give (see, to that effect, OHIM v Kaul , paragraphs 43 and 68).
111. It must be emphasised at the outset that 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).
112. It should also be borne in mind that the statement of reasons thus required is all the more necessary when OHIM decides to reject the evidence submitted out of time.
113. The Court has held inter alia that where OHIM is called upon to give a decision in opposition proceedings, taking facts or evidence submitted out of time 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 ( OHIM  v Kaul , paragraph 44).