General Court clarifies when additional proof of use can and cannot be filed

European Union
In Cesea Group Srl v Office for Harmonisation in the Internal Market (OHIM) (Case T-250/09, September 22 2011), the General Court has overturned a decision of the Second Board of Appeal of OHIM in which the latter had partly accepted an application for a declaration of invalidity of a Community trademark (CTM) registration by Mangini & C Srl.

In April 2005 Cesea Group Srl obtained registration of the following mark for goods in Classes 29, 30 and 32 of the Nice Classification:

In February 2007 Mangini applied for a declaration of invalidity of the registration on the basis of a World Intellectual Property Organisation registration for the word mark MANGINI dating from 2000, covering goods in Class 30 and café and restaurant services in Class 42, and designating Benelux, France and Germany.

Cesea requested via OHIM that Mangini provide evidence of use of its mark. Mangini filed evidence in the form of a number of invoices relating to the sale of confectionery issued by Mangini SpA (previously known as Mangini Srl).

In May 2008 the Cancellation Division of OHIM rejected the application for a declaration of invalidity on the grounds that Mangini had not demonstrated genuine use of the earlier mark in relation to the relevant goods and services. It held that Mangini had not filed sufficient evidence of the intensity and nature of use and that it had not provided any proper reasons for non-use. With regard to the nature of use, the Cancellation Division held that, although the invoices contained either the company name Mangini SpA or figurative marks containing the word 'mangini', the confectionery in the body of the invoices was identified by different names. Therefore, the invoices did not demonstrate any connection between the registered mark and the mark used.

In June 2008 Mangini appealed, arguing that the invoices showed sales in Benelux, France and Germany under the mark MANGINI. It submitted additional evidence, namely a consent agreement in which it had authorised Mangini Srl or SpA to use the mark in Italy and abroad, sales figures, documents showing that it had participated in exhibitions in Germany between 2002 and 2007, packaging, advertising materials and catalogues.

In April 2009 the Second Board of Appeal overturned the Cancellation Division’s decision and partly upheld the application for a declaration of invalidity, essentially because the absence of a trademark identifying the confectionery made it reasonable to assume that it was marketed under the trademark MANGINI, which appeared in the header of the invoices. It also held that:
  • some of the additional evidence which had been presented to it served to remove any doubt about the marketing of the confectionery under the mark; and
  • the reasoning of the Cancellation Division that the invoices did not prove the nature of use of the mark were sufficient to justify the later filed evidence. 
The board therefore upheld the application for a declaration of invalidity in relation to “preserved, dried and cooked fruits and vegetables; jellies and jams” in Class 29, and “preparations made from cereals, bread, pastry and confectionery, edible ices; honey” in Class 30.

Cesea appealed to the General Court, arguing that the board had incorrectly assessed that there was a justification for the late filing of additional evidence of use of the earlier mark.

The court referred to:
  • Rule 40(6) of the Community Trademark Implementation Regulation (2868/95), which provides that, if proof of use is not filed within a set time limit, the application for a declaration of invalidity will be rejected; and
  • Rule 22(2), which contains a corresponding provision in relation to oppositions, but which the court held to apply also to invalidation proceedings.
The court then stated that:
  • Rule 22(2) could not be interpreted as excluding the consideration of additional proof of use, even if it was filed after the deadline;
  • late filing could be justified if the proprietor of the CTM registration refers to a new element in order to contest the evidence of use filed by the proprietor of the earlier mark or if the additional evidence was not available when it was due to be filed; and
  • the incorrect analysis by the Cancellation Division of the evidence filed by the applicant for a declaration of invalidity could lead to a cancellation of its decision.
It concluded that the reasoning of the Cancellation Division, leading to a finding that the evidence of use of the earlier mark was insufficient, could not in itself be considered a new element justifying the submission of additional evidence at Board of Appeal level. To accept that such reasoning by the Cancellation Division constituted a new element would limit considerably the scope of the time limit in Rule 22(2). This would mean that, every time the Board of Appeal considered that the Cancellation Division had incorrectly deemed evidence of use insufficient, it would be able to accept additional evidence submitted for the first time to it. 

The court thus had to conclude that the board had incorrectly held that the reasoning of the Cancellation Division constituted a new element such as to permit the acceptance of such additional evidence. Accordingly, the court upheld the appeal and overturned the board's decision, with costs awarded against OHIM.

At first sight, this is a primarily procedural case from which any practical benefit is hard to glean. However, it provides a salutary lesson that it is best practice to submit evidence of use, or indeed any evidence, within a time limit set by OHIM, unless an extension of time has been granted for so doing, in order to prevent such evidence being disregarded because it has been filed too late. It also confirms that evidence submitted for the first time to the Board of Appeal (ie, which OHIM has not received at first instance) is rarely admissible.

Chris McLeod, Squire Sanders & Dempsey (UK) LLP, London

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