OHIM Board of Appeal should have considered late evidence, says CFI

In Flex Equipos de Descanso SA v Office for Harmonization in the Internal Market (OHIM) (Case T-192/04), the Court of First Instance (CFI) has held that the Board of Appeal of OHIM was wrong to believe that it had no discretion to take into account evidence submitted after the relevant deadline had passed.

In 2000 Leggett & Platt Inc applied to register the word LURA-FLEX as a Community trademark in Classes 6 and 20 of the Nice Classification for, among other things, spring assemblies for incorporation into furniture, beds and bedding. In 2001 Fabricas Lucia Antonio Betere SA (Flabesa) filed a notice of opposition under Article 8(1)(b) and 8(5) of the Community Trademark Regulation (40/94/EC) on the basis of two previous Spanish registrations for the composite mark FLEX, which were registered in respect of similar goods. As a result of the identical nature of the goods covered by the two conflicting signs, Flabesa contended that there was a likelihood of confusion due to the close visual, aural and conceptual similarities of the marks.

Flabesa submitted a number of documents in Spanish, including Spanish decisions that recognized the reputation of its mark and promotional materials. Leggett & Platt argued that the documents could not be taken into consideration as they were not in the language of the opposition proceedings. Flabesa had provided translated documents, but they were received outside the prescribed period. As a result, the Opposition Division of OHIM refused to accept the translated documents and rejected the opposition.

On appeal, Flabesa - which had been taken over by Flex Equipos de Descanso - contended that its evidence was submitted by way of response to the arguments of Leggett & Platt and should thus be admissible. The Board of Appeal disagreed and approved the Opposition Division's exclusion of the evidence. With regard to the differences between the marks, the board agreed with the Opposition Division that there was no likelihood of confusion. The board also rejected the arguments based on Article 8(5) of the regulation on the grounds that the submitted evidence was not within the prescribed period.

On appeal, the CFI began with a discussion of OHIM v Kaul (Case C-29/05), extracting the following key points:

• The board has a wide discretion to take account of facts and evidence which are submitted out of time.
  
  
• This is justified where:
  
  
  • the material was likely to be relevant to the outcome of the application; and
    
    
  • the stage of the proceedings at which the late submission took place and the surrounding circumstances did not vitiate against such matters being taken into account.
    
    
• Such an approach would contribute to ensuring that marks which are likely to be later challenged successfully by means of annulment or infringement proceedings are not registered.
  
  
• The board possesses the power to carry out a new, full examination in terms of both law and fact.

Therefore, the CFI held that the board had been wrong to consider that it had no discretion in deciding whether to take account of the evidence at issue. The CFI thus annulled the board's decision.

This case is of significance for its illuminating discussion of the wide discretionary powers of the board. This decision confirms that late material should be considered by the board if it is likely to be relevant to the outcome.

Shamila Ashiq, Hammonds, London