Second shout pays off for Outburst

Case in Point: T-214/08 Judgement of the General Court, Fifth Chamber, 28 March 2012

Court of Justice of the European Communities Paul Alfons Rehbein (GmbH & Co.) KG v OHIM

On 2 March 2005, Hervé Dias Martinho and Manuel Carlos Dias Martinho filed a CTM for the Trade Mark OUTBURST & Design for “luggage trunks and valices, umbrellas, wallets, purses not of precious metal; handbags, haversacks, trolley cases with wheels, travel bags, beach bags; vanity cases (not fitted)” in Class 18 and “clothing, footwear, headgear, shirts, clothing of leather or of imitations of leather, belts (clothing), gloves (clothing), scarves, hosiery, socks, slippers, beach footwear, ski footwear, sport footwear, underwear; jumpsuits, wetsuits for surfing, snow suits” in Class 25. 

On 23 December 2005, Paul Alfons Rehbein (GmbH & Co.) KG (PAR) filed Opposition under Article 8(1)(b) against all goods, based on German OUTBURST Registration dated 31 August 1999 designating “clothing, footwear and items of headgear” in Class 25. 

On 10 July 2006, PAR was put to proof of use of the earlier Trade Mark in accordance with Articles 43(2) and (3) of the Regulations.  Two days before the deadline, PAR submitted three pieces of evidence, the first being a written statement by its managing director stating that its subsidiary Heinrich Nickel GMBH & Co had been extensively using the earlier Trade Mark since 2000 for sportswear, detailing the volume of sales of clothes bearing the Trade Mark achieved by the subsidiary between 2000-2005.  The second piece of evidence being a list of sales of clothes bearing the Trade Mark during the 2000-2005 period, broken down by customer, supported by delivery notes, invoices, two pages (one of which dated August 2004) from catalogues published for commercial fairs, photographs of garments, labels of garments and two pages extracted from a sales brochure.  The third piece of evidence being a written statement made by the managing director of Heinrich Nickel’s customer stating that it had been purchasing sportswear labelled with OUTBURST since 2000.

On 26 June 2007, the Opposition Division rejected the Opposition in its entirety on the grounds that PAR had not provided proof of genuine use of the earlier Trade Mark.

On 8 August 2007, PAR appealed to OHIM against the decision and on 23 October 2007 submitted a statement substantiating the grounds of appeal to which it annexed additional evidence of use of OUTBURST over and above that previously provided.  On 13 March 2008, the Second Board of Appeal dismissed the Appeal on the grounds that the evidence originally presented was “insufficient overall to prove a genuine use of the earlier Trade Mark” and the additional evidence filed 23 October 2007 was deemed too late, being outside the initial two month period set by OHIM and no new factors existed which would justify the late submission of evidence.  Accordingly the Board held that it was not necessary to examine the conditions for the existence of a likelihood of confusion.

PAR was unhappy with this decision and claimed that the General Court should annul the contested decision and order OHIM to pay the costs.  PAR relied on two pleadings, the first being that the evidence presented before the Opposition Division within the time limit had proved genuine use of the earlier Trade Mark to the required standard.  Article 43(2) and (3) provides that the Applicant of the CTM may request proof that the earlier Trade Mark has been put to genuine use in the territory where it is protected, during the five years preceding the date of publication of the opposed CTM.  Under Rule 22 (3) of the Regulation, proof of use must relate to the place, time, extent and nature of use of the earlier Mark.  As supported by Sunrider v OHIM the purpose of the provision is not to assess the commercial success of the business but simply confirm that there has been genuine use in accordance with the essential function of the Trade Mark. 

Both OHIM and the Board of Appeal felt that the evidence submitted and in particular, the written statement of the managing director, did not have “full and complete independent probative value” in accordance with the meaning of Article 76(1)(f).  The Board also held that the supporting documents annexed to the statement (with the exception of the two commercial catalogues dated August 2004), as per the second piece of evidence, did not sufficiently show place, time, and extensive use of the earlier Trade Mark.  The General Court agreed with this assessment and the first plea was dismissed. 

The second plea posed the question of whether the Board of Appeal did have discretion to take into consideration the evidence which was filed for the first time on 23 October 2007.  According to settled case law and as per Article 74(2), the submission of facts and evidence remains possible after the expiry of the specified time subject to there being no provision to the contrary.  Rule 22(2) states “where the opposing party has to furnish proof of use or show there are proper reasons for non-use, OHIM shall invite him to provide proof acquired within such period as it shall specify.  If the opposing party does not provide such proof before the time limit expires, OHIM shall reject the Opposition”.  The General Court held that the second sentence of Rule 22(2) cannot be seen as precluding additional evidence from being taken into consideration where new factors exist, even if such evidence is submitted outside the time limit (HIPOVITON and CORPO livre).  Consequently, the General Court held that the additional evidence was admissible as “it merely supplemented and explained the evidence which it had produced before the Opposition Division within the time limits”.  This interpretation met the criteria laid down in OHIM v Kaul and consequently, had this judgement been followed, the Board of Appeal would have accepted the complementary evidence.  Consequently the second plea was upheld and the contested decision annulled.

It is clear from this decision that Rule 22(2) does not preclude the admission of additional evidence which supplements previous evidence filed within the time limit, where the initial evidence was relevant, but ultimately held to be insufficient.  Where the parties involved had not deliberately abused the time limits by knowingly employing delaying tactics or deliberately submitting negligent evidence, there is the right for corroborative new evidence to be allowed.  In particular, OHIM will be justified in accepting supporting evidence and new facts where an initial assessment suggests it is likely to be relevant to the outcome of the opposition proceedings and secondly, where the late submission was justified to achieve legal certainty and a sound decision. 

About the Author: Rosalyn Newsome is a Trade Mark Partner at Barker Brettell LLP,  Rosalyn specialises in all aspects of trade mark law across a range of industry sectors, in particular fast moving consumer foods, toys and online dating.

This article first appeared in the ITMA Review July/August 2012.