AG provides guidance on time limits for submission of evidence of earlier rights

European Union

In Rintisch v Office for Harmonisation in the Internal Market (OHIM) (Cases C-120/12 P, C-121/12 P and C-122/12 P, May 16 2013), Advocate General Sharpston has provided further guidance on the interpretation of the provisions of the Community Trademark Implementation Regulation (2868/95) relating to the time limits for the submission of evidence of earlier rights on which an opposition is based.

The opinion concerns three oppositions filed by Mr Rintisch against three Community trademark (CTM) applications, on the grounds that there was a likelihood of confusion with a number of earlier German trademark registrations of which he claimed to be owner. Rintisch did not fully substantiate the grounds of opposition with the necessary documentary evidence of the existence of German trademark registrations, such as evidence that the registrations over 10 years old had been renewed, or translations of the documentary evidence, within the time limit set by OHIM. The opposition was therefore dismissed. Rintisch appealed this decision, filing the necessary further documents and translations, which the Board of Appeal of OHIM and the General Court refused to take into account, on the grounds that it had no discretion to do so.

Advocate General Sharpston discussed whether the General Court was wrong to find that the Board of Appeal had no discretion to take into account evidence relating to the validity of earlier marks after the expiry of the time limits set by OHIM. Rintisch appealed the decision of the General Court on the grounds that it had infringed Article 74(2) of the Community Trademark Regulation (40/94) on the basis that it had wrongly found that the Board of Appeal has no discretion when deciding that an opposing party has not substantiated its earlier marks.

The argument centred on the interpretation of Article 74(2), which provides that OHIM “may disregard facts or evidence which are not submitted in due time by the parties concerned”, and whether this should be interpreted to read that OHIM and the Board of Appeal had the discretion to take into account the evidence that Rintisch had submitted after the relevant deadline, which pertained to the admissibility of the oppositions. The advocate general considered that the evidence in question, concerning the existence and validity of the marks on which the opposition was based, would have to be submitted prior to OHIM deciding whether the opposition was admissible. 

She reviewed this in light of Rule 50(1) of Regulation 2868/95, which states that:

“Where the appeal is directed against a decision of an Opposition Division, the board shall limit its examination of the appeal to facts and evidence presented within the time limits set in or specified by the Opposition Division in accordance with the regulation and these rules, unless the board considers that additional or supplementary facts and evidence should be taken into account pursuant to Article 74 (2) (now Article 76 (2)) of the regulation.”

The question of whether the Board of Appeal had discretion to take into account the evidence submitted after the time limit centred on whether it would be considered to be “additional or supplementary facts and evidence”. 

The advocate general considered that, where the evidence in question was to demonstrate that a mark had been put to genuine use, there would be greater discretion. Given that the issue of genuine use is so dependent on the particular goods and services in relation to which a mark is used and the particular market, what counts as genuine use can vary wildly. The advocate general stated that, whilst Rules 22(3) and 22(4) of Regulation 2868/95 describe what needs to be proved and how this can be done, there is no exhaustive list of indispensable documentary evidence that must be submitted to satisfy the burden of proving genuine use.

In contrast, Rules 19(2)(a)(ii) and 20(1) of Regulation 2868/95 clearly prescribe the evidentiary threshold for demonstrating the validity of trademarks that are not CTMs, on which a party has based its opposition. Rule 19(2)(a)(ii) of the regulation clearly states that, for registered trademarks that are not CTMs, the opposing party is required to submit a copy of the relevant registration certificate, and if appropriate, a copy of the latest renewal certificate showing that the term of protection of the trademark extends beyond the time limit set by the Opposition Division. Additionally, Rule 19(3) clearly requires the evidence to be in the language of the proceedings or accompanied by a translation of such, and for any translations to be submitted within the time limit prescribed by the Opposition Division. In addition, Rule 19(4) states that:

the office shall not take into account written submissions or documents, or parts thereof, that have not been submitted or that have not been translated into the language of the proceedings, within the time limit set by the office”.

In light of these clear and unambiguous terms, the advocate general considered that the General Court was right to hold that the Board of Appeal did not have discretion to take into account the evidence of the existence and validity of the earlier marks filed after the expiry of the time limit. Given that the Board of Appeal could not exercise such discretion, the advocate general believed that there was no scope to consider how the Board of Appeal might exercise this discretion.

In light of the above, the advocate general recommended that the appeal be dismissed in its entirety.

In the interest of legal certainty, this is the approach that should be taken. OHIM sets clear and unambiguous deadlines for the submission of documents, including evidence. This case emphasises the importance of complying with these deadlines, and the ramifications of failure to do so.

Chris McLeod and Amanda McDowall, Squire Sanders (UK) LLP, London

Unlock unlimited access to all WTR content