Does the principle of continuity in terms of functions constrain the Board of Appeal to take into consideration facts and evidence submitted by the appellant in support of his opposition for the first time in appeal?
The Court of First Instance’s case-law followed three divergent paths. Some judgments decided that, when time limits for the production of material are fixed by the first-instance department, they cannot be circumvented by its production at a later stage. Others have considered the question to be essentially a matter for the discretion of the Board of Appeal. And the third line of case-law considered time limits are automatically ‘reset to zero’ on appeal.
By a decision issued on March 13th 2007 (Case C-29/05 P OHIM vs./ Kaul), the European Court of Justice stated that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time-limits. But a party has no unconditional right to have facts and evidence submitted out of time before an Opposition Division taken into consideration by the Board of Appeal.
While giving reasons for its decision in that regard, the Board has a wide discretion for taking such information into account or not when ruling a case.
Two proceedings brought to the Board and handled by our firm illustrate circumstances where new facts and evidence are likely or not to be justified for OHIM.
In both cases, the OHIM rejected the oppositions on the basis that the evidence filed by the opponent was insufficient to prove genuine use of the earlier trademark.
In the first case (Decision of 23rd March 2006 Case R343/2005-2 SHIP CHANDLER vs./ CHANDLERS HILL), the Board of Appeal dismissed the appeal and confirmed the opposition had been correctly rejected on the basis of lack of proof of use because the appellant did not provide any reason for not having filed new evidence of use within the time limit as set by the Opposition Division.
In other words, the Board of Appeal condemned a purported negligence of the opponent before the Opposition Division and its incapacity to explain such deficiency before the Board of Appeal. Thus, the new evidence was not taken into account by the Board.
In the second case (Decision of 28th June 2007 Case R 313/2006-2 BORISKOV vs./ BORISOV), the Board of Appeal admitted the new evidence and declared that the opponent had proven that the prior trademark was put to genuine use.
Why? The opponent supplied more than perfunctory evidence at the opposition stage of the proceedings and the evidence it provided failed only on the ground that it did not establish the extent of use of the sign. This was due to an absence of invoices.
The decision issued by the Board of Appeal on March 2006 leads us to outline the business structure of the co-operative our client belongs to. The Board decided that the opponent had given a plausible explanation as to why invoices were not issued directly to end consumers, namely that it sold BORISKOV vodka through distributors within the cooperative.
For these reasons, the Board considered it fair to allow the opponent to supply further documents at the appeal stage with a view to rectifying the deficiency. We find that admissibility of new evidence before the Board should prevail when possible because it contributes to ensuring that marks, whose use could later on be challenged successfully by means of annulment proceedings, are not registered.