The CENTROTHERM case - clear as mud?

With one Cancellation Division decision, one Board of Appeal decision, two General Court decisions and two decisions of the Court of the European Union (ECJ), this must surely be the most litigated trademark revocation action in the history of the Community trademark (CTM) - and it is still not over.

The trademark CENTROTHERM, registered in the name of Centrotherm Systemtechnik GmbH under No 1301019 in respect of Classes 11, 17, 19 and 42 of the Nice Classification, was the subject of a revocation action for non-use by centrotherm Clean Solutions. Despite the evidence submitted by Centrotherm Systemtechnik of a sworn declaration by its manager, four invoices and 14 photographs of goods unconnected to those invoices, the Cancellation Division of OHIM held that genuine use was not established and that the registration should be revoked in its entirety. 

Centrotherm Systemtechnik appealed this decision and submitted additional evidence as part of that appeal.  The Board of Appeal of OHIM held that the evidence originally submitted before the Cancellation Division should have been considered to establish genuine use in respect of some of the goods in classes 11, 17 and 19, and annulled the cancellation decision as regards those goods which were therefore to be maintained in the registration. However, the Board of Appeal held that it could not take into account the additional evidence filed.  

This appeal decision was referred to the General Court by Centrotherm Systemtechnik, which considered that the rest of the cancellation decision should also have been annulled, and separately by centrotherm Clean Solutions, which considered that the original decision of revocation in its entirety should be reinstated. 

In the appeal by centrotherm Clean Solutions (T-427/09), the General Court held that evidence filed with the Cancellation Division in fact did not establish genuine use of the mark for those selected goods in Classes 11, 17 and 19 and that the decision of the Board of Appeal to overturn the original decision of the Cancellation Division of revocation in its entirety was incorrect. Thus, the original decision of revocation in its entirety was reinstated. 

This was appealed by Centrotherm Systemtechnik to the ECJ (C-609/11 P), essentially on the ground that the General Court, if it was minded to overrule the Board of Appeal, should have replaced that appeal decision with one of its own. It was held that Centrotherm Systemtechnik could have requested this type of alteration of the appeal decision as part of its arguments before the General Court, but it did not do so. The General Court only needed to address the request Centrotherm Systemtechnik made, which was to dismiss the appeal of centrotherm Clean Solutions. This is a cautionary tale for all European court litigants to include each and every remedy sought at all levels and to include fall-back requests in case the other side is successful in their action.

Centrotherm Systemtechnik argued that they had asked the General Court to alter the decision by requesting it to exercise its power to take into account the evidence filed with the Cancellation Division and the additional evidence filed with the Board of Appeal and that it had incorrectly failed to do so. The ECJ held that the evidence filed with the Cancellation Division had been properly considered and that the General Court could not alter the decision to take into account the evidence filed before the Board of Appeal, as the board had expressed no opinion on that evidence. The General Court’s ability to alter decisions is limited to cases where General Court is in a position to establish in light of the matters of fact and law what decision should have been taken. The Board of Appeal had made no findings of fact on the probative value of the additional evidence so the General Court could not rule on what was the correct decision to take on the issue. Thus, Centrotherm Systemtechnik failed in its appeal and the original decision of revocation in its entirety was maintained. 

The General Court, in the appeal by Centrotherm Systemtechnik (T-434/09) which considered that the rest of the cancellation decision should also have been annulled, held that the evidence of use submitted to the Cancellation Division did not establish genuine use for any of the goods or services as the sworn statement of Centrotherm Systemtechnik’s manager could not have any probative value unless it is supported by the 14 photographs and the four invoices in question, in view of the clear links between him and the applicant, which was not the case. It also held that OHIM could not consider whether additional evidence on its file relating to this registration from another unrelated matter and presented by a third party established genuine use as it was bound by Article 76(1) of the Community Trademark Regulation (207/2009) in cases of relative grounds for refusal to only consider the facts presented by the parties in the present case and not to consider facts of its own motion like it would in an absolute grounds issue. The General Court considered that a revocation action was a relative ground for refusal rather than an absolute grounds issue. 

It was also held that the additional evidence filed before the Board of Appeal (resubmitting the evidence from the unrelated matter) could not be taken into account as the long line of case law on late-filed evidence based on Article 76(2) of Regulation No 207/2009 applied only where there was no provision to the contrary, and that Rule 40(5) of the Community Trademark Implementation Regulation (2868/95) (“If the proof is not provided within the time limit set, the Community trademark shall be revoked“) was such a mandatory provision. Thus, the appeal by Centrotherm Systemtechnik to seek to have the rest of the cancellation decision annulled was unsuccessful.

Centrotherm Systemtechnik then appealed this to the ECJ (C-610/11 P), which held that the evidence filed before the Cancellation Division was properly considered by the General Court and that it had not ruled out the possibility that a sworn statement might have probative value. The General Court was permitted to conclude that, after conducting a specific examination of the statement at issue in the present case, in view of the clear links between the author of the statement and the applicant, a probative value could not be attributed to that statement unless it was supported by the 14 photographs and the four invoices submitted in evidence. This is not a general rule to be applied in all cases, but was permitted in the circumstances of the case at hand. 

However, the ECJ backtracked from the General Court decision on the basis of a number of misinterpretations made by the General Court. The ECJ held that OHIM was not obliged to consider facts of its own motion like in an absolute grounds action under Article 76(1), but not for the reasons expressed by the General Court (ie, not because a revocation action is a relative ground). However, the right result was reached albeit by a wrong legal route, so the decision was not overturned on this basis. The correct reasoning is set out in Paragraph 62:

“Thus, it may be inferred from a combined reading of Articles 15, 42(2), 51(1) and 57(2) of Regulation 207/2009 that, in proceedings for revocation of a mark, it is for the proprietor of the mark, and not OHIM of its own motion, to establish genuine use of that mark.”

The ECJ did however overturn the decision of the General Court on the late-filed evidence before the Board of Appeal. The ECJ held that where some evidence of use was filed in the original period and it was not entirely irrelevant, Rule 40(5) of Regulation 2868/95 did not preclude the application in revocation actions of the principles of law relating to further late-filed evidence. Thus, the ECJ annulled the decision of the General Court on this point and replaced it with its own decision. The decision of the Board of Appeal not to consider the late-filed evidence was annulled and the matter was remitted to the Board of Appeal to make a decision on that late-filed evidence.

So the matter now goes back to the Board of Appeal, which must make a decision on whether the additional evidence saves the day for Centrotherm Systemtechnik; otherwise, the original revocation decision will be reimposed.

Niamh Hall, FRKelly, Dublin and Belfast