General Court takes generous approach as to admissibility of additional evidence

European Union
In Buffalo Milke Automotive Polishing Products Inc v Office for Harmonisation in the Internal Market (OHIM) (Case T-308/06, November 16 2011), the General Court has upheld a decision of the Second Board of Appeal of OHIM in which the latter had accepted additional evidence that was presented for the first time before the board to prove that the earlier mark had been put to genuine use.
In February 2001 US company Buffalo Milke Automotive Polishing Products Inc filed a Community trademark application for the figurative sign BUFFALO MILKE for goods in Classes 3, 18 and 25 of the Nice Classification. The application was opposed by German company Werner & Mertz GmbH based on its German figurative mark BUFFALO (Registration 2 079 354), registered on July 15 1994 for goods in Class 3 such as “washing and bleaching preparations; cleaning, polishing, scouring and abrasive preparations”. The opposition was limited to the goods covered by the application falling within Class 3 (ie, “waxes, polishing creams, cleaning preparations, creams for leather, preservatives for leather, washing preparations, all for the automotive vehicle care”).
The Opposition Division of OHIM rejected the opposition in its entirety on the grounds that the evidence provided by Werner to demonstrate use of its earlier mark was insufficient. In particular, the Opposition Division found that the documents produced had all been drawn up in-house by Werner and that they did not provide an indication as to the extent of the use. The documents consisted mainly of:
  • an affidavit by Werner's managing director;
  • two undated brochures containing details of items for sale under the earlier mark;
  • two undated copies of product packaging with incorporated English translation;
  • two price lists; and 
  • five turnover reports (two of which dated from 2003 and thus fell outside the relevant period).
Upon appeal to the Second Board of Appeal of OHIM, Werner presented additional evidence in the form of nine invoices dating from April 20 2001 to March 18 2002.
The board annulled the decision of the Opposition Division and remitted the case to it, arguing mainly as follows:
  • The additional evidence was admissible, as it aimed to confirm or support documentary evidence produced in due time before the Opposition Division which intended to show that Werner had made use of the earlier mark in Germany during the five years preceding the date of publication of the application (ie, between April 8 1997 and April 7 2002). Moreover, Article 74(2) of the Community Trademark Regulation (40/94) (now Article 76(2) of the Community Trademark Regulation (207/2009)) gives OHIM the discretion to decide whether to take into account facts and evidence submitted late.
  • The evidence provided sufficiently proved the use of the earlier mark for “polishing cream” and “leather conditioner” in the sense of Article 42(2) of Regulation 207/2009. Moreover, the evidence supported and confirmed the information contained in the affidavit and price lists, and seemed to correspond to the reports on turnover.
In support of its action before the General Court, Buffalo Milke raised a single plea based on breach of Article 43 of Regulation 40/94 and Rule 22 of the Community Trademark Implementation Regulation (2868/95), arguing that:

  • the Board of Appeal should not have declared admissible the documents produced belatedly for the first time before it; and
  • the nine invoices filed for the fist time before the board, even examined in association with the other evidence, did not prove genuine use of the earlier mark in Germany during the relevant period.
The General Court rejected these arguments.

First, it reaffirmed established case law (see OHIM v KAUL (Case C-29/05 P) and New Yorker SHK Jeans GmbH v OHIM (Case T-415/09)) that, according to the wording of Article 74(2) of Regulation 40/94, the submission of facts and evidence by the parties remains possible after the expiry of the time limits. Therefore, OHIM might take account of any type of facts or evidence submitted late. In the present case, the Board of Appeal had sufficiently justified its decision to accept, in view of the circumstances, the evidence submitted for the first time before it, as it aimed to confirm or support the documentary evidence filed in due time before the Opposition Division.

Second, the court held that the second sentence of Rule 22(1) of Regulation 2868/95 (now Rule 22(2) of the same regulation) cannot be interpreted as precluding additional evidence from being taken into consideration where new factors emerge, even if such evidence is adduced after the expiry of the time limit. In the present case, the decision of the Opposition Division was the 'new factor', as Werner had produced relevant initial evidence within the period prescribed, judging in all good faith that it was sufficient to substantiate its claim, and learnt only by the decision of the Opposition Division that that evidence had been deemed insufficient (see a diametrically opposed approach in Cesea Group Srl v OHIM and CENTROTHERM (Case T-434/09)).

Further, the court found that the nine invoices provided for the first time before the Board of Appeal (dated April 20 2001 to March 18 2002), in conjunction with the materials produced before the Opposition Division, were sufficient to show genuine use of the earlier mark from April 8 1997 until April 7 2002.

Specifically, the affidavit emanating from Werner's managing director had probative value, as the information provided by it was in fact confirmed by other evidence submitted by Werner (see CENTROTHERM). Moreover, the court rejected the argument that evidence which is either undated or bears a date which falls outside the relevant period is irrelevant: Rule 22 of Regulation 2868/95 does not state that each piece of evidence must necessarily give information about all four elements to which proof of genuine use must relate - namely the place, time, nature and extent of use.

With regard to the nine invoices, the court found that they showed sales serving a real commercial purpose and did not merely show sporadic use. The court pointed out that even minimal use of a mark or use by only a single importer in the member state concerned can be sufficient to establish genuine use (see Atlas Transport (Case T-482/08)). Furthermore, the assessment of the extent of use should not rest exclusively on the amount of sales specifically indicated in the invoices. As they did not bear consecutive numbers, and were mainly dated from different months, it was possible to assume with a reasonable degree of certainty that the overall sales of the products were in reality much higher than those specifically referred to.

Arguably, the General Court took a rather generous approach as to the admissibility of new evidence produced for the first time before the Board of Appeal (with the decision of the Opposition Division being considered as a 'new factor' allowing the submission of new documents) and carried out a complacent overall assessment of genuine use (finding that the affidavit by the owner of the earlier mark, undated documents and a few invoices had probative value).

Florian Schwab, Boehmert & Boehmert, Munich

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