New Yorker SHK Jeans GmbH & Co. KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
Date: 2013-07-18
10. Having noted, at paragraphs 23 and 24 of the judgment under appeal, referring to the judgment in Case C-29/05 P OHIM v Kaul  [2007] ECR I‑2213, paragraph 42, that, it can be inferred 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 periods governing such submission provided for in Regulation No 207/2009 and that OHIM is in no way prohibited from taking account of facts and evidence submitted late, the General Court rejected the plea thus put forward by New Yorker Jeans finding, in essence, as follows at paragraphs 25 to 34 of the judgment under appeal:
‘25 Rule 22(2) of Regulation No 2868/95 provides that, where, pursuant to Article 42(2) or (3) of Regulation No 207/2009, the opposing party is required to furnish proof of genuine use of the earlier mark, OHIM is to invite that party to provide the proof required within such period as it specifies. The second sentence of Rule 22(2) adds that, if the opposing party does not provide such proof before that period expires, OHIM is to reject the opposition.
26 It follows from that second sentence that submission of proof of use of the earlier mark after the period fixed for that purpose has expired means, in principle, that the opposition will be rejected, without OHIM having any discretion in that regard. …
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30 … [T]he view must be taken that, by having filed within the time limit, namely on 6 June 2006, relevant evidence such as an affidavit, invoices and photographs, [Vallis K.-Vallis A.] must be regarded as having complied with the time limit provided for in the second sentence of Rule 22(2) of Regulation No 2868/95. Furthermore, it is not in dispute that, following the applicant’s observations that that evidence was insufficient, OHIM provided [Vallis K.-Vallis A.] with the opportunity to file its observations by 14 January 2007. In that context, the evidence filed with [Vallis K.-Vallis A.’s] observations in compliance with that time limit was capable of being taken into account by the Opposition Division.
31 Rule 22(2) of Regulation No 2868/95 must be understood as meaning that nothing precludes additional evidence, which merely adds to other evidence submitted within the time limit set, from being taken into account, since the initial evidence is not irrelevant, but was challenged by the other party as being insufficient. Such a consideration, which in no way renders the above rule superfluous, is all the more valid since [Vallis K.-Vallis A.] did not abuse the time limits set by knowingly employing delaying tactics or by demonstrating manifest negligence.
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33 In the present case, since the evidence submitted by [Vallis K.-Vallis A.] outside the time limit set by the Opposition Division was not the initial and only proof of use, but rather evidence additional to relevant proof which was submitted within the time limit, the fact that the applicant disputed that evidence was sufficient to justify production by [Vallis K.-Vallis A.] of additional evidence when it filed its observations. The fact that that evidence was taken into consideration made it possible for the Opposition Division and then the Board of Appeal to decide on the genuine use of the earlier mark on the basis of all the relevant facts and evidence.
34 … [T]he conclusion that the Opposition Division was entirely correct to take account of the catalogues, filed before it on 15 January 2007, also appears to comply with the more general objective underlying the opposition proceedings, in the context of which Article 76(2) of Regulation No 207/2009 has been interpreted as meaning that even evidence which had been submitted out of time must be taken into consideration provided that it appears to be relevant and that the stage of the proceedings at which it is filed and the surrounding circumstances do not preclude its submission.’
22. As the Court has found, it follows 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 passing 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 thus submitted or produced late ( OHIM v Kaul , paragraph 42).
23.  In stating that the latter ‘may’, in such a case, decide to disregard evidence, Article 76(2) grants OHIM broad 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).
24. As regards, more specifically, the submission of proof of genuine use of the earlier mark in the context of opposition proceedings, it must be noted that, although Article 42(2) of Regulation No 207/2009 provides that, if the applicant for registration so requests, the proprietor of a mark who has given notice of opposition is to furnish proof of genuine use of the mark, in the absence of which the opposition is to be rejected, that regulation does not contain a provision specifying the time limit within which such proof must be adduced.
25. On the other hand, Rule 22(2) of Regulation No 2868/95 provides, in this regard, that, where such an application is made, OHIM is to invite the proprietor of the earlier mark to furnish proof of use of the mark or show that there are proper reasons for non-use within such period as it may specify.
28. In this respect, although, admittedly, it is apparent from the wording of that provision that, when no proof of use of the mark concerned is submitted within the time limit set by OHIM, the opposition must automatically be rejected by OHIM, such a conclusion is not, on the other hand, inevitable when proof of use has indeed been submitted within that time limit.
30. It follows from the foregoing that, as the General Court correctly found in the judgment under appeal, where, as in this case, evidence considered relevant for the purposes of establishing use of the mark at issue 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. In such a case, and as the General Court also correctly found, 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, as was noted at paragraphs 22 and 23 of this judgment.
33. As regards the exercise of that discretion by OHIM for the purposes of the possible taking into account of evidence submitted out of time, it should be noted that the Court has already held that 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 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 preclude such matters being taken into account ( OHIM v Kaul , paragraph 44).