The ECJ has ruled on aspects for the use of an earlier trade mark in appeal proceedings before the EUIPO: on time limits for proof and submission of evidence and on the timing of this review in relation to opposition.
For the proof of genuine use of the earlier trade mark in appeal proceedings before the EUIPO, a time limit is set by the EUIPO within which it has to furnish proof of use (see Rules for implementing Regulation No 40/94).
However, the submission of evidence of use of the mark is still possible after the expiry of this time limit. The Office is in no way prohibited from taking into account additional evidence submitted late in the exercise of the discretion conferred on it by Article 76(2) of Regulation No 207/2009, the ECJ ruled in the interesting case of mobile.de (C-418/16 P).
Explicitly, according to the ECJ, this rule (40(6) of the Implementing Regulation) does not constitute a contrary provision to Article 76(2) of Regulation No 207/2009, under which the Board of Appeal would be precluded from taking into account additional evidence of use of the earlier mark in question.
Proof of genuine use is a “preliminary question”
Another important aspect of appeal proceedings before the EUIPO is decided by the ECJ: the question of the order of examination by the EUIPO. Must similarity or likelihood of confusion be established first, and then the use of the earlier mark, or the other way round? Or is this a matter of discretion?
The ECJ stated clearly: The question of proof of genuine use of the earlier mark must be clarified before the decision on the opposition as such and in this sense constitutes a “preliminary question”, the highest European court ruled.
Remittal: Cancellation Division is bound by proof of trade mark use
The ECJ also explained what consequences this has for the Invalidity Division. The Cancellation Division may, in the context of the remittal made pursuant to Article 64(2) of Regulation No 207/2009, take into account only those services for which the Board of Appeal has decided that proof of genuine use of the earlier national mark in question has been established, for the examination of the merits of the applications for a declaration of invalidity with regard to the relative ground for refusal provided for in Article 8(1)(b) of the Regulation, the ECJ ruled.
However, according to the ECJ, the Cancellation Division cannot examine new evidence of genuine use of the earlier national mark in question for which, according to the Board of Appeal – without the applicant in the invalidity proceedings having contested this by bringing an action before the General Court – that evidence has not been adduced without calling into question the finality of its own decisions and affecting legal certainty.
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