ECJ rules on Board of Appeal's discretion to consider late-filed evidence

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, October 3 2013), the Court of Justice of the European Union (ECJ) has dismissed three appeals brought by Bernhard Rintisch. The ECJ found that the Board of Appeal had correctly dismissed oppositions filed by Rintisch, even though it had erred in assuming that it had no discretion to take into account additional evidence - concerning the existence, validity and scope of protection of earlier trademarks - filed by Rintisch after the expiry of the deadline set by OHIM.

During the course of the opposition proceedings, OHIM requested that Rintisch provide proof of the existence and validity of the earlier German trademarks on which the oppositions were based and whose registration was more than 10 years old. In order to do so, Rintisch had to submit the renewal certificates and translate them into the language of the proceedings. In each case, OHIM set a deadline of two months, pointing out that the oppositions would be dismissed without any examination as to the merits if the documents were not filed in due time. Rintisch failed to provide the renewal certificates and their translation into English within the deadline, but submitted the documents one month after the expiry of the deadline (in Case C-120/12 P) or when filing the notices of appeal (in Cases C-121/12 P and C-122/12 P).

The Opposition Division of OHIM dismissed the oppositions due to the lack of proof of the existence and validity of the marks under Article 20(1) of the Community Trademark Implementation Regulation (2868/95). The Board of Appeal upheld the decisions, arguing that it was not allowed to take into consideration the documents that had been filed late, but was bound to apply Rule 20(1). Alternatively, the Board of Appeal stated that, even if it had discretion to take into account these documents, it would have exercised it against Rintisch. The General Court reached the same conclusion and confirmed the Board of Appeal's point of view.

On appeal to the ECJ, Rintisch argued that the General Court and OHIM had misinterpreted Article 74(2) of the Community Trademark Regulation (40/94) (now Article 76 of the Community Trademark Regulation (207/2009)) and Article 50(1) of the Implementing Regulation by finding that OHIM had no discretion to take into account documents submitted after the expiry of the deadlines. Article 74(2) provides that OHIM "may disregard facts or evidence that are not submitted within due time".

The ECJ held that Article 74(2) grants OHIM broad discretion to decide whether or not to take such evidence into account and that the Board of Appeal was not bound to apply Rule 20(1) of the Implementing Regulation. Even if, in principle, the Board of Appeal must apply the provisions relating to the proceedings before the department which has made the decision against which the appeal is brought, this is not the case where other special rules exist. According to the ECJ, Subparagraph 3 of Article 50(1) of the Implementing Regulation is a special provision that explicitly allows the application of Article 74(2), which grants OHIM broad discretion. The General Court and the Board of Appeal had thus erred in finding that OHIM had no such discretion.

However, the Board of Appeal had correctly rejected the oppositions for lack of sufficient evidence. The board had stated that, had it enjoyed discretion to take into account the documents submitted late, it would have exercised that discretion against Rintisch. The ECJ found that the board would have been correct in exercising its discretion restrictively. Article 19 of the Implementing Regulation specifies, in a precise and exhaustive manner, the documents that must be submitted to demonstrate the existence, validity and scope of protection of a mark. Therefore, when filing the oppositions, Rintisch should have been aware of the evidence that he had to produce, and he already had the renewal certificates at his disposal. There was no reason to hand in the relevant documents outside the time limit given, and Rintisch did not provide such a reason.

The ECJ's judgment clarifies that the Board of Appeal might have discretion to take into account additional evidence where the Opposition Division does not. The ECJ stated that this discretion must be exercised restrictively where the Implementing Regulation specifies, explicitly and exhaustively, the documents to be submitted.

This decision highlights once again that opponents must be very cautious when submitting the relevant documents and their translation to substantiate an opposition. Even if, contrary to the Opposition Division, the Board of Appeal might have discretion to take into account documents filed late, the board must make use of this discretion in a very restrictive manner. 

Tanja Hogh Holub, Beiten Burkhardt Rechtsanwaltsgesellschaft mbH, Munich