General Court: no discretion to admit "national law" evidence submitted for first time at the BoA stage
The General Court had to decide on and denied the admissibility of evidence of national law which was submitted for the first time and the BoA stage (here: in support of an Article 8(4) EUTM Regulation opposition), Moravia Consulting v EUIPO (T-316-318/16) all of 12 October 2017.
The oppositions in the underlying case were based on the alleged existence of earlier national Czech rights (Article 8(4)(b) EUTM Regulation). The question at the centre of the case was whether evidence submitted in support of the opponent's basis of opposition under Article 8(4)(b) EUTM Regulation was admissible given it was first submitted by the opponent at the BoA appeal stage (rather than before the EUIPO opposition division).
The EUIPO's BoA had held that the opponent had failed to – timely -- submit evidence concerning the earlier rights before the opposition division. Information about local law which the applicant had submitted for the first time at the BoA was neither additional, nor supplementary and thus inadmissible. Further, the EUIPO BoA held that it did not have discretion to accept evidence 'out of time'. The opponent argued that its evidence should have been taken into consideration under the principle iura novit curia. It argued that it was not necessary to file details of the specific provisions of national (here: Czech law), which were accessible to the public. Further, in view of the opponent the EUIPO was obliged to clarify matters by indicating what specific information was lacking in the opposition papers so that the opponent could duly correct this.
General Court decision
The General Court agreed with the EUIPO BoA that the opponent had failed to provide evidence intended to prove the existence, validity and scope of the protection of the earlier national trade marks during the opposition proceedings.
With regard to the application of Article 8(4)(b) EUTM Regulation, the national rules relied upon and national judicial decisions were relevant. On that basis, the court explained, the opponent had to establish that the opposition marks fell within the scope of national law relied upon.
Rule 50(1) of Regulation No 2868/95 in combination with Article 76(2) of Regulation No 207/2009, which relate to the assessment of the facts by EUIPO of its own motion, provide as a general rule (and unless otherwise specified), that the submission of facts and evidence by the parties remains possible after the time limits under the provisions of Regulation No 207/2009 and that EUIPO is in no way prohibited from taking account of facts and evidence which are invoked or produced out of time. However, and this is the crucial part, the court stressed that this discretion only related to whether or not it was necessary to accept evidence that was submitted out of time. Notably, the discretion did not relate to the assessment of the nature of that evidence.
Further, the court stressed that the CJEU had previously held that Article 76(2) of Regulation No 207/2009 should be interpreted in the same way in relation to proof of the existence, validity and scope of protection of a trade mark, but cannot be interpreted as meaning that it extended the discretion of the EUIPO's Boards of Appeal to new evidence (citing EUIPO v Grau Ferrer, C-597/14 P, paragraph 27). References to the provisions of national law submitted by the opponent for the first time when setting out its statement of grounds before the EUIPO's Board of Appeal were neither additional, nor or supplementary evidence to the evidence already submitted at the EUIPO's opposition division. The General Court concluded that the EUIPOs BoA had therefore correctly refused to accept this evidence at the appeal stage. It was therefore the opponent who had to provide EUIPO with particulars establishing the content of the national law rather than the EUIPO having to demand these.
Notable are the court's comments in paragraph 42 (author's edits in square brackets):
"Rule 19(2)(d) of Regulation No 2868/95 (now Article 7(2)(d) of Commission Delegated Regulation (EU) 2017/1430 …) places on the opponent the burden of providing EUIPO not only with particulars showing that it satisfies the necessary conditions, in accordance with the national law that it is seeking to have applied, in order to be able to have the registration of an EU trade mark prohibited by reason of an earlier right, but also with particulars establishing the content of that law [citing Edwin v OHIM, C-263/09 P]. It is true that the Board of Appeal and the EU judicature must, of their own motion, obtain information about the national law where such information is necessary to assess whether the ground for refusal of registration in question applies, which entails them taking into consideration, in addition to the facts which have been expressly put forward by the parties to the opposition proceedings, facts which are well known, that is, facts which are likely to be known by anyone or which may be learnt from generally accessible sources [citing OHIM v National Lottery Commission, C-530/12 P, ?????, T-96/13]. However, that obligation only applies in circumstances where EUIPO or the EU judicature already have before them information relating to national law, either in the form of claims as to its content, or in the form of evidence submitted and whose probative value has been claimed [citing in analogy ?????, T-96/13].
Comment: an interesting case on the perennial question of "out of time" evidence and a clarification of the scope of discretion afforded to the EUIPO's Board of Appeal - which is limited to additional and supplementary evidence but does not extend to (the assessment of) the nature of the evidence.