OPINION OF ADVOCATE GENERAL
CAMPOS SÁNCHEZ-BORDONA
delivered on 5 December 2017 (1)
Case C‑478/16 P
European Union Intellectual Property Office (EUIPO)
v
Group OOD
(Appeal — European Union trade mark — Definition and acquisition of the European Union trade mark — Relative grounds for refusal — Opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade — Examination by the Board of Appeal — New or additional evidence — Infringement of Article 8(4) and Article 76(2) of Regulation No 207/2009)
1. This appeal will allow the Court to refine its case-law on the treatment of national law in proceedings before the European Union Intellectual Property Office (EUIPO). In order to decide on the appeal, it will be necessary to analyse whether the General Court erred in law in requiring the EUIPO Board of Appeal to examine, of its own motion, certain evidence relating to national law.
2. The dispute which is now at the appeal stage began when an undertaking (Group OOD) opposed an application for a European Union trade mark, relying, under Article 8(4) of Regulation (EC) No 207/2009, (2) on the fact that it was the proprietor of a similar, non-registered trade mark of only national significance, which had priority.
3. The adjudicating bodies of EUIPO (namely the Opposition Division and the Board of Appeal) dismissed the claim made by Group OOD, because, in their view, that undertaking had failed to provide sufficient evidence of the national law applicable to its non-registered trade mark or had done so out of time.
4. The General Court, however, annulled (3) the final decision of the Board of Appeal, criticising it for having failed to use the discretion available to it to examine, of its own motion, the content and scope of the national law relied on. The General Court also rejected the argument that the evidence provided by Group OOD before the Board of Appeal was completely new, which could have justified the action of the Board of Appeal.
I. Legislative framework
A. Regulation (EC) No 207/2009 (4)
5. Under Article 8(4):
‘4. Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Community legislation or the law of the Member State governing that sign:
(a) rights to that sign were acquired prior to the date of application for registration of the [European Union] trade mark, or the date of the priority claimed for the application for registration of the [European Union] trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark’.
6. Article 76, on the ‘examination of the facts by the Office of its own motion’ provides as follows:
‘1. In proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence [(5)] and arguments provided by the parties and the relief sought.
2. The Office may disregard facts or evidence which are not submitted in due time by the parties concerned.’
B. Regulation (EC) No 2868/95 (6)
7. Rule 19, on the substantiation of the opposition, provides:
‘1. The Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of his opposition or to complete any facts, evidence or arguments that have already been submitted pursuant to Rule 15(3), within a time limit specified by it and which shall be at least 2 months starting on the date on which the opposition proceedings shall be deemed to commence in accordance with Rule 18(1).
2. Within the period referred to in paragraph 1, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition. In particular, the opposing party shall provide the following evidence:
…
(d) if the opposition is based on an earlier right within the meaning of Article 8(4) of … Regulation [No 207/2009], evidence of its acquisition, continued existence and scope of protection of that right;
…
3. The information and evidence referred to in paragraphs 1 and 2 shall be in the language of the proceedings or accompanied by a translation. The translation shall be submitted within the time limit specified for submitting the original document.
4. The Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.’
8. Rule 20(1), which concerns the examination of the opposition, states:
‘1. If until expiry of the period referred to in Rule 19(1) the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well his entitlement to file the opposition, the opposition shall be rejected as unfounded.’
9. The third paragraph of Rule 50(1) states:
‘Where the appeal is directed against a decision of an Opposition Division, the Board shall limit its examination of the appeal to facts and evidence presented within the time limits set in or specified by the Opposition Division in accordance with the Regulation and these Rules, unless the Board considers that additional or supplementary facts and evidence should be taken into account pursuant to Article [76](2) of the Regulation.’
II. Background to the dispute
10. On 13 February 2012, (7) Mr Kosta Iliev filed at EUIPO an application for registration of a European Union trade mark for certain services in Classes 35, 39 and 43 of the Nice Agreement. (8) The figurative sign he sought to register was the following:
11. On 11 July 2012, Group OOD opposed the registration of the new sign, pursuant to Article 41 of Regulation No 207/2009, claiming that it was the proprietor of a non-registered figurative mark, which it used in Bulgaria, the Czech Republic, Hungary, Poland, and Slovakia for services in Class 39, as reproduced below:
12. Relying on several documents, Group OOD submitted that it had, since 2003, been using the non-registered trade mark for interstate bus transport services and operated a regular bus service between Sofia (Bulgaria) and Prague (Czech Republic).
13. By decision of 14 June 2013, the Opposition Division dismissed the objection of Group OOD, because the latter had failed to specify the national law under which it was necessary to prohibit use of the trade mark applied for in the Member States concerned and had failed to provide any evidence in that connection.
14. The appeal brought by Group OOD against the decision of the Opposition Division was dismissed by the Fourth Board of Appeal, (9) on the ground, in essence, that:
(a) Group OOD had failed to provide evidence of the national law applicable in the opposition proceedings;
(b) as regards the non-registered Bulgarian trade mark, the documents filed in the opposition proceedings did not include any reference to Bulgarian law, thus disregarding the requirements of Rule 19(2) of Regulation No 2868/95;
(c) the reference to the three Bulgarian legal provisions made before the Board of Appeal was out of time, as it should have been made within the time limits of the opposition proceedings;
(d) information concerning the Bulgarian law was lacking, no original-language version of Article 12(6) of the Zakon za markite i gueografskite oznachenija (10)was provided and no evidence was adduced that the text originated from an official and reliable source;
(e) in any event, Article 76(2) of Regulation No 207/2009 did not apply, since the mere reference, with the noted shortcomings, to certain national provisions constitutes neither a fact nor evidence for the purposes of that provision.
III. Procedure before the General Court and judgment under appeal
15. On 1 August 2014, Group OOD brought before the General Court an action for annulment of the decision of the Board of Appeal. It raised three pleas in law, alleging, respectively, infringements of Article 76(1), Article 76(2) and Article 8(4) of Regulation No 207/2009.
16. After examining those three pleas in law together, the General Court upheld, in the judgment under appeal, the arguments of Group OOD. As the action was concerned with the applicant’s obligation to establish the content of the Bulgarian legislation, under Rule 19(2)(d) of Regulation No 2868/95, it was necessary, first, to determine whether the Board of Appeal, before which that evidence had been adduced for the first time, could take account of it.
17. According to the judgment under appeal, in the first place, Rule 19(2)(d) of Regulation No 2868/95 does not refer specifically and exhaustively to the documents which must support an opposition brought in accordance with Article 8(4) of Regulation No 207/2009. That rule merely refers, without further details, to the requirement to file evidence of the acquisition, continued existence and scope of protection of the earlier right, within the meaning of that article. (11) The General Court did not accept that the Board of Appeal’s discretion as regards facts and evidence adduced late, laid down in Article 76(2) of Regulation No 207/2009, was to be exercised in a restrictive manner. (12)
18. In the second place, the General Court rejected the argument put forward by EUIPO that the references to the three provisions of Bulgarian law constituted not additional evidence (the only evidence which can be accepted when submitted late) but entirely new evidence. The General Court classified that evidence as being concerned with proving the acquisition, continued existence and scope of protection of the non-registered Bulgarian trade mark, for the purposes of Article 8(4) of Regulation No 207/2009.
19. In any event, according to the General Court, the reference to the rules of the Bulgarian legal order was covered by Article 76(2) of Regulation No 207/2009, relied on by Group OOP before the Board of Appeal. Furthermore, even if that reference were held to be insufficient to comply with the evidentiary obligations with respect to national legislation, the Board of Appeal should have exercised its discretion, which it failed to do. (13)
20. As regards fulfilment of the evidentiary obligations with respect to national legislation under Rule 19(2)(d) of Regulation No 2868/95, the judgment under appeal found that Regulation No 207/2009, Regulation No 2868/95 and the case-law do not identify the manner in which the content of national legislation must be proven. From this it inferred that the Board of Appeal could not require the opponent to produce an extract from the Darzhaven vestnik (Bulgarian Official Journal) or the official Bulgarian text, especially since English is the language of the case before EUIPO. In that regard, it took the view that, in order to identify correctly the applicable national legislation and to enable the trade mark applicant to exercise his rights of defence, nor was it indispensable for the text of that legislation to originate from an official source. (14)
21. Applying, by analogy, the judgment in OHIM v National Lottery Commission, (15) the General Court stated that it was incumbent on the competent EUIPO bodies to assess the authority and scope of the information provided concerning national law. For that purpose, they should, of their own motion, have obtained information about that national law, where it was necessary for the purposes of assessing the applicability of the ground for refusal and, in particular, for the purposes of assessing the accuracy of the facts adduced or the evidential value of the documents submitted.
22. Where it had doubts about faithful reproduction, applicability or interpretation of the national law, the Board of Appeal was required to exercise its powers of verification and to carry out further research into the wording and scope of the provisions of national law relied on, either of its own motion or by inviting the opponent to corroborate the information it had provided on Bulgarian law. (16)
23. The General Court concluded that the Board of Appeal was not entitled to discount the reference to Article 12(6) of the Bulgarian Law on trade marks, included by the opponent in the complaint, without having exercised its powers of verification. Consequently, it annulled the contested decision and ordered EUIPO and Mr Iliev to bear their own costs and to pay those of Group OOD.
IV. Procedure before the Court of Justice and forms of order sought by the parties
24. The appeal was received at the Registry of the Court on 19 September 2016. The response was lodged by Group OOD on 23 January 2017.
25. EUIPO claims that the Court should set aside the judgment under appeal and order Group OOD to bear the costs. Group OOD, by contrast, asks the Court to dismiss the appeal and to order EUIPO to pay the costs.
26. At the request of both parties, under Article 76(1) of the Rules of Procedure, a hearing was held on 28 September 2017 at which both parties presented oral argument.
V. Examination of the appeal
A. The first ground of appeal, alleging infringement of Article 76(2) of Regulation No 207/2009, read in conjunction with Rule 50(1) of Regulation No 2868/95.
1. Summary of the arguments of the parties
27. EUIPO submits, in the first place, that the Court has clearly set out the requirements to be met by any party opposing the registration of a trade mark: it is necessary not only to fulfil the two conditions relating to national law referred to in Article 8(4) of Regulation No 207/2009, but also to provide evidence of the wording of that legislation. (17) Failure to meet those requirements cannot be rectified before the Board of Appeal when the opponent has failed, within the time limit, to provide the Opposition Division with any information relating to the national legislation.
28. In the second place, according to EUIPO, Article 76(2) of Regulation No 207/2009, read in conjunction with Rule 50(1) of Regulation No 2868/95, applies only to facts and evidence which are submitted for the first time before the Board of Appeal and are additional or supplementary to the facts and evidence produced to fulfil the requirement of Article 8(4) of Regulation No 207/2009.
29. In the third place, it considers that the General Court erred in accepting that any information which was produced relating to the national legislation was to be understood to be supplementary to the evidence previously provided in the context of the conditions for the application of Article 8(4) of Regulation No 207/2009.
30. In the fourth place, EUIPO claims that the judgment under appeal failed to establish whether there was a sufficiently close link between the information concerning the national legislation provided to the Board of Appeal and that provided, within the time limit, to the Opposition Division. In the absence of such a link, the evidence should be considered to be ‘completely new’ and not ‘additional’ or ‘supplementary’.
31. Group OOD challenges EUIPO’s arguments and, in particular, denies that the reference to Article 12(6) of the Bulgarian trade marks law constitutes a claim or evidence which is completely new and maintains that the dispute turns purely on that question.
32. It submits, sharing the view of the General Court, that the discretion provided for in Article 76(2) of Regulation No 207/2009 may be exercised when the information provided is of some importance to the outcome of the dispute and the stage of the proceedings at which it is presented and the surrounding circumstances do not preclude that information from being taken into consideration.
33. According to Group OOD, Article 8(4) of Regulation No 207/2009 requires evidence not of the national legislation but of the content of the earlier right. National rules are only one of the elements used to prove the existence of a valid right in respect of a non-registered trade mark, on which its proprietor’s opposition is based. Moreover, Regulation No 2868/95 does not state which specific evidence makes it possible to establish the content of the national rules which govern the rights attaching to non-registered trade marks.
34. Lastly, Group OOD claims, contrary to EUIPO’s submissions, that the exercise by the Board of Appeal of its discretion would not have been detrimental to Mr Iliev’s rights of defence. It was, on the contrary, Group OOD’s own rights of defence which were infringed, as its claims were not discussed even though the requirements of Article 76(2) of Regulation No 207/2009 were met.
2. Analysis of the ground of appeal
35. In EUIPO’s view, since the evidence of national law was introduced into the proceedings for the first time before the Board of Appeal, the General Court should have confirmed that it was valid to reject it, as the Board of Appeal has no discretion to examine new evidence. (18)
36. Analysis of the appeal could, in principle, be limited merely to a legal characterisation of the evidence (relating to Bulgarian law) produced by Group OOD. From that perspective, it would be a question merely of ascertaining whether it was ‘new’ or ‘additional’ evidence. Once characterised, it would be necessary to consider the legal consequences of its character on the exercise by the Board of Appeal of its discretion.
37. It is my view, however, that the issue raised has a wider scope, which justifies a more in-depth assessment. In examining the functions of the Boards of Appeal, it will be necessary to take into account, in particular: (i) the status of national law in that type of proceedings; (ii) the limits on the discretion to assess evidence submitted late; and (iii) when evidence is to be considered new or additional. It is only when those issues have been resolved that it will be possible to give an appropriate response to EUIPO’s claim.
(a) Treatment of national law in proceedings under Article 8(4) of Regulation No 207/2009
38. Where Regulation No 207/2009 refers to national law, that law may become a key factor in deciding, for example, whether there is a relative ground for refusing the trade mark applied for. That is the case with Article 8(4) of that regulation, under which, in order to resolve the dispute, it is permissible to take into account both the ‘Community legislation’ and the ‘law of the Member State governing that sign [a non-registered trade mark or another sign used in the course of trade of more than mere local significance]’.
39. In those cases, the adjudicating bodies of EUIPO have the greatest interest in preventing the registration of signs which may then be successfully challenged in invalidity proceedings. That public interest justifies taking into account evidence which is submitted late. (19)
40. The Court has held that, in invalidity proceedings pursuant to Article 53(2) of Regulation No 207/2009, it is for ‘the applicant to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application, in order to be able to have the use of a Community trade mark prohibited by virtue of an earlier right, but also particulars establishing the content of that law’. (20)
41. There are certain difficulties involved in the automatic application of that case-law to opposition proceedings such as those in this case. The requirements of that case-law derive from the interpretation of Rule 37(b)(iii) of the Implementing Regulation, (21) which refers, expressis verbis, to national law, which is understood as national legislation. By contrast, Rule 19(2)(d) of that regulation requires as evidence for the opposition based on Article 8(4) of Regulation No 207/2009 evidence which relates to the ‘acquisition, continued existence and scope of protection’ of the earlier right relied on by the opponent. The reference to national law understood as ‘national legislation’ is, at best, a reference to overlapping concepts.
42. Rule 19(2)(d) of the Implementing Regulation must therefore be regarded as a procedural provision which specifically governs the burden placed on an opponent relying on an earlier non-registered trade mark (as in the present case).
43. However, the reference in Article 8(4) of Regulation No 207/2009 to the ‘law of the Member State governing that sign’ requires some clarification as to who is responsible for proving the existence and content of such (national) legislation. It is true that Rule 19 of the Implementing Regulation does not require the opponent to produce the national law, if he finds other evidence to prove the acquisition, existence and scope of protection of his non-registered priority trade mark. However, if his rights over the non-registered sign (including that of prohibiting the use of the trade mark applied for by his opponent) are protected by the national legislation on which he relies, (22) he must specify, at least, the content of that legislation.
44. In that situation, the usual provisions relating to evidence (the party making the claim must provide the evidence), as set out in the second part of Article 76(1) of Regulation No 207/2009, will apply. In the case of national legislation, however, some qualification of that principle is necessary.
45. As I have already stated, EUIPO has an interest in preventing the registration of signs which may be successfully challenged in invalidity proceedings, if only on account of the principle of sound administration. Given the significance of the decision which they have to adopt, the EUIPO bodies must not avoid making a full assessment which, where appropriate, will include the duty to examine, of their own motion, evidence relating to national law. The EUIPO bodies cannot become ‘mere boards for the registration of the national law produced by the applicant’, (23) that is to say, they must not be limited ‘to the role of mere validation of the national law as submitted by the applicant for a declaration of invalidity’. (24)
46. The case-law of the Court on this subject could be described as ambivalent. On the one hand, it requires the applicant to adduce evidence of the use or of the existence, validity and scope of protection of a trade mark. (25) On the other hand, it emphasises EUIPO’s obligation to examine, of its own motion, the conditions of application and the scope of the rules of national law relied upon. (26)
47. It is my view that, in order to prove the content of the national law protecting a non-registered sign, the second of these approaches is more appropriate. That was the approach taken in the judgment in OHIM v National Lottery Commission, (27) in which the Court stated unequivocally, that ‘it was without making any error of law that the General Court held, in paragraph 20 of the contested judgment, that “in circumstances in which OHIM may be called upon to take account, in particular, of the national law of the Member State in which protection is given to the earlier mark on which the application for a declaration of invalidity is based, it must — of its own motion[(28)] and by whatever means considered appropriate — obtain information about the national law of the Member State concerned, where such information is necessary for the purposes of assessing the applicability of a ground for invalidity relied on before it and, in particular, for the purposes of assessing the accuracy of the facts adduced or the probative value of the documents submitted”’.
48. The adjudicating bodies of EUIPO (29) must, therefore, seek to supplement the evidence of national law, so that the file relating to the opposition decision is as detailed as possible, with a view to any future challenge of the decision. In this way, moreover, the General Court may more easily exercise its power of (unlimited) jurisdiction to interpret national law, pursuant to Article 65(2) of Regulation No 207/2009. (30)
49. That requirement does not affect the burden of proof which lies with the opponent. EUIPO will carry out an examination of its own motion when it has information relating to national law, either in the form of claims relating to its content, or in the form of evidence placed on the file whose probative value is relied on, (31) or even mere prima facieevidence. (32)
50. Ascertaining whether or not that information is sufficient to trigger the requirement to examine the national legislation of its own motion will depend on the circumstances of each case. One of those circumstances is, precisely, whether the information relating to the national law was submitted late in the proceedings, for the purposes of Article 76(2) of Regulation No 207/2009. Another may be that both parties know, or ought to know, both the language and the national law in question, as they are of the same nationality and, in particular, because the origin of the dispute is confined to that Member State.
(b) Evidence submitted late before the Boards of Appeal
51. Article 76(1) of Regulation No 207/2009, the infringement of which was relied on by EUIPO, establishes, in the first part thereof, the (general) principle that the Office is to examine the facts of its own motion, which extends to all the EUIPO bodies. However, the second part of that paragraph introduces a modification for ‘proceedings relating to relative grounds for refusal of registration’: the examination is then restricted to the grounds relied upon and the forms of order sought by the parties. The latter clarification is an expression of the principle of the prohibition on ruling ultra petita, which is not surprising in the case of inter partes proceedings, the limits of which are determined by the parties. (33)
52. Against that background, Article 76(2) of Regulation No 207/2009 introduces an exception to the inadmissibility of facts and evidence submitted or produced, in both cases, late. In accordance with that article, EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned. (34)
53. In its case-law, (35) the Court has invariably interpreted that provision as meaning 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 to which such submission is subject under the provisions of Regulation No 207/2009 and EUIPO, including the Boards of Appeal, is in no way prohibited from taking account of facts and evidence submitted or produced late.’ (36)
54. It is also settled case-law that, since the word ‘may’ is used, the provision at issue grants EUIPO wide discretion to decide, while giving reasons for its decision, whether or not to take into account, in each specific case, evidence submitted late. (37)
55. As regards the exercise of that discretion in the context of opposition proceedings, that case-law justifies its use by the Office when it considers, first, that the material which has been produced late is, on the face of it, likely to be relevant to the outcome of the opposition and, secondly, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against this. (38)
56. Subsequent to the judgment under appeal, the Court delivered a judgment which limited (39) that discretion. In EUIPO v Grau Ferrer, the third paragraph of Rule 50(1) of the Implementing Regulation was interpreted as meaning that, in opposition proceedings, the discretion is not to be extended to new evidence, as that provision refers only to additional evidence. (40)
57. EUIPO bases much of its appeal (41) on that clarification in the case-law. It is my view, however, that the separate issues should not be conflated: (a) the appeal in EUIPO v Grau Ferrer concerned evidence of the existence and validity of a national trade mark; (42) (b) the present case, however, concerns evidence of national legislation, with the difference which this entails.
58. The national law applicable pursuant to Regulation No 207/2009 cannot be regarded, in this context, as a mere fact, since, under Article 65(2) of that regulation, at least its interpretation by the EUIPO bodies is subject to a full review of legality by the General Court, which can determine of its own motion the content of that law and the conditions of its application. (43) I shall refer to this dual nature below.
(c) New, additional or supplementary evidence
59. In its appeal, EUIPO claims that, in order to accept supplementary evidence concerning national legislation, other evidence concerning that legislation must have been submitted previously and in due time. That did not happen in this case, as Group OOD submitted information relating to Bulgarian law only before the Board of Appeal (and not before the Opposition Division, the first-tier body).
60. New evidence, (44) for the purposes of this case, is characterised by the absence of a link with another previously submitted document and by its late submission. Supplementary or additional evidence is, on the other hand, evidence which supplements other evidence which has previously been submitted, in due time.
61. That distinction and the effects of each category of evidence underpin the case-law of the Court: ‘when no proof of use of the mark concerned is submitted within the time limit set by the Office, the opposition must automatically be rejected by it. However, when evidence is produced within the time limit set by the Office, the production of supplementary evidence remains possible (see, to that effect, judgment of 18 July 2013, New Yorker SHK Jeans v OHIM, C‑621/11 P, EU:C:2013:484, paragraphs 28 and 30)’. (45)
62. The content of national law combines, in that context, factual elements (the party relying on it must put it forward and provide at least some evidence of it) and strictly legal elements (it is for the General Court and, as the case may be, the Court of Justice, to ascertain whether that content has been properly or wrongly interpreted by the EUIPO bodies).
63. Indeed, this symbiosis requires the EUIPO bodies actively to gauge the meaning and scope of the national rules, where prima facie evidence of those rules has been submitted to those bodies. On the basis of that submission, with minimal documentary support, any subsequent production of evidence before the Boards of Appeal will make it possible for such evidence to be classified as supplementary or additional evidence and not as new evidence.
64. It must be asked, however, whether any of those classifications is consistent with the evidentiary requirements relating to national law in a situation such as that in this dispute, which is between two parties of the same nationality that are subject to the same national legal order and have brought before EUIPO a dispute which they had already initiated in their country, Bulgaria.
(d) Application to this case of earlier criteria for interpretation
65. In paragraph 57 of the judgment under appeal, the General Court considered that the three provisions of Bulgarian law relied on by Group OOD before the Board of Appeal were not new evidence, as they formed part of the evidence used to prove the acquisition, continued existence and scope of protection of the non-registered trade mark relied on in the opposition. (46)
66. As regards legal characterisation, that assessment of the nature of the evidence is subject, in principle, to the scrutiny of the Court of Justice on appeal. (47) Some clarifications should be made in that regard.
67. In the first place, paragraph 27 of Grau Ferrer should be read in conjunction with the preceding paragraph, paragraph 26, from which it is clear that that case concerned proof of use, the total lack of which required EUIPO automatically to reject the opposition. (48) In that case, the opponent had failed to provide the Opposition Division with proof of the existence of the trade mark on which it partially based its opposition. In the present case, however, there is no dispute as to whether there is evidence of use, in particular, in Bulgaria, of the opposing non-registered trade mark, irrespective of the degree to which such evidence is convincing.
68. In such circumstances, the evidence of the Bulgarian law adduced before the Board of Appeal supplemented, from a legal viewpoint, the acquisition, the continued existence and (in particular) the scope of protection of the non-registered trade mark, pursuant to Rule 19(2)(d) of the Implementing Regulation. From that perspective, therefore, the General Court did not err in classifying the evidence as additional.
69. In the second place, it may be inferred from paragraph 35 of the judgment under appeal that Group OOD had not submitted before the Opposition Division any evidence relating to the applicable national legislation. It was made clear at the hearing that the express references to Article 12(6) of the Bulgarian trade mark law were first made before the Board of Appeal. (49)
70. However, in the third place, it cannot be overlooked that both the applicant for the new trade mark and Group OOD were Bulgarian and were represented by professionals who could be expected to be familiar with their national law, in particular, as regards the protection of non-registered trade marks. Contrary to EUIPO’s claims, in that situation there would be neither a reduction of the rights of the defence nor the legal uncertainty to which it refers. (50)
71. Moreover, there is no indication that before the Opposition Division the two parties concerned had any uncertainties as to the content of the national law applicable to them. The applicant for the new sign (Mr Iliev), a Bulgarian citizen, had been represented by Bulgarian lawyers before the Bulgarian courts, where he relied on Bulgarian law, before he extended his dispute to EUIPO, by seeking registration of a European Union trade mark. In those circumstances, Group OOD could have taken the view that the burden of proof forming the basis of its opposition concerned only the relevant facts (that is to say, use in the course of trade of more than mere local significance of the earlier non-registered sign) and not the national law, the content of which did not appear to be in dispute. However, what is the position so far as EUIPO is concerned?
72. With respect to national law, the Office takes a particular position in relation to opposition proceedings based on Article 8(4) of Regulation No 207/2009. The Bulgarian national legislation at issue was that referred to in the table setting out national rights which was published by EUIPO in its Guidelines for examination of European Union trade marks (specifically, in the chapter on the filing of oppositions on the basis of that article). (51) It is understandable that, in the light of that information and the earlier vicissitudes in the relationship between the applicant and the opponent, the latter would not feel obliged to make, before the Opposition Division, references to the national rules which were more explicit than those already set out in those guidelines.
73. In those specific circumstances, the Opposition Division could have easily asked the opponent for clarifications concerning the national law, without, for that reason, undermining the principle of equality of arms, since the other party could have subsequently put forward any arguments which they deemed appropriate in that regard. Nothing prevented the Opposition Division from adopting, for example, a means of giving or obtaining evidence, in accordance with Article 78(1) of Regulation No 207/2009, (52) if it had doubts as to the applicability and the interpretation of the national law relied on, exercising its powers of verification, as referred to by the General Court. (53)
74. Lastly, requiring, as EUIPO appears to do, that, from the outset, in opposition proceedings evidence should be provided of each and every one of the four requirements of Article 8(4) of Regulation No 207/2009, would result in an excessively formalistic approach, which is incompatible with the aim of avoiding the registration of trade marks that may subsequently be annulled. Furthermore, such a requirement would reduce to a minimum the discretion to accept evidence submitted late, which, it should be recalled, is a ‘general rule’, in the words of the Court itself. (54)
75. In short, I consider that there were sufficient reasons for the evidence of the three provisions of Bulgarian law adduced before the Board of Appeal to be regarded as supplementary to the other evidence submitted before the Opposition Division. Consequently, there is no error of law in the judgement under appeal in relation to Rule 50 of the Implementing Regulation. The General Court could rightly consider, however, that the references to Bulgarian law before the Board of Appeal were additional and not new. (55)
76. On that basis, nor does the General Court err in law when it states: (a) that, in this case, restricted use of ‘the Board of Appeal’s discretion in taking into account facts and evidence adduced late’ was not relevant, an assertion which EUIPO did not challenge on appeal; (56) and (b) that the Board of Appeal was ‘incorrect in failing to exercise the discretion with which it was vested and [using] that discretion to refuse to take account of the references to Bulgarian law produced before it. In so doing, the Board of Appeal infringed Article 76(2) of Regulation No 207/2009 and the third subparagraph of Rule 50(1) of Regulation No 2868/95’. (57)
77. The first ground of appeal therefore cannot be upheld.
B. The second ground of appeal, alleging infringement of Article 8(4) of Regulation No 207/2009, read in conjunction with Rule 19(2) of the Implementing Regulation
1. Summary of the parties’ positions
78. In its second ground of appeal, EUIPO maintains that the judgment under appeal infringed Rule 19(2)(d) of the Implementing Regulation in declaring that there are no formal requirements in relation to the submission of evidence relating to national legislation. It adds that respect for the rights of the defence in inter partes proceedings necessitates compliance with certain formal requirements.
79. Thus, in the light of the principle of ‘congruent forms’, the requirements relating to evidence that a trade mark has been registered, referred to in Rule 19(2)(a)(ii) of Regulation No 2868/95, must be applied by analogy to evidence relating to national rules which confer legal effects on non-registered trade marks.
80. Group OOD disputes that claimed application by analogy, arguing that the circumstances described in point (a) of Rule 19(2) of the Implementing Regulation and those described in the remaining points of Rule 19(2) differ with regard to the evidence required, depending on the type of earlier right claimed in the opposition. That rule does not lay down one single method of furnishing proof for the various cases (national trade mark which is registered, is applied for, is well-known, has a reputation, is non-registered or even is fraudulently registered).
81. In any event, Rule 19(2)(d) does not require the opponent to submit to the EUIPO bodies a copy of the official text, in the original language, of the national legislation on which it relies. The Office has the power to review and verify the national law to establish the exact content of that legislation.
2. Analysis of the ground of appeal
82. In the form in which it has been worded by EUIPO, the second ground of appeal is, in my view, unconvincing.
83. In the first place, as regards the comparison with the evidence required in the case of registered trade marks (Rule 19(2)(a)(ii) of the Implementing Regulation), I agree with Group OOD: the legislature varied the supporting documents according to the type of right relied on in each case.
84. Thus, for registered trade marks, it seems logical that it required the presentation of registration certificates and other certificates, documents which are generally issued at the point of registration and whose probative value is beyond doubt. A reasonably careful proprietor of a registered trade mark would be expected to have such certificates in his possession or to be able to obtain them without great difficulty.
85. According to the same logic, when an opponent relies on a prestigious registered trade mark (Rule 19(2)(c)), he should be required to produce those certificates and ‘evidence showing that the mark has a reputation’. Without restrictions and using the evidence he deems appropriate, each trade mark proprietor may establish the reputation claimed, of which there is usually no record in official documents.
86. That same line of thought applies to evidence required in the case of non-registered trade marks. Because the nature of those signs means that there are no official records of them, it is understandable that the description of the evidence to prove their use and the rights attaching to them are more vague, precisely to avoid rigorous formal requirements in a domain where such requirements cannot be fulfilled.
87. Furthermore, the evidence which must be provided by the proprietor of a non-registered sign, when opposing the registration of a new trade mark, is fundamentally linked to the right relied on by that proprietor. The acquisition, continued existence and scope of protection of those non-registered trade marks may be established if, pursuant to the national rules (or, where applicable, which is not the case here, pursuant to EU rules), their proprietor has been granted the priority right to use the sign and to prohibit the use of subsequent signs.
88. Consequently, imposing formal evidentiary requirements where the legislative text deliberately opted (in my opinion, rightly) to allow a certain freedom, would be tantamount to redrafting the Implementing Regulation in a way that is not compatible with the EU legislature’s intention.
89. In the second place, it would be acceptable, in theory, to require the inclusion of a translation of the national rules relied on in the opposition when the opposing party (that is to say, the trade mark applicant) is unable to understand them. However, in the present case, it need only be pointed out that the applicant, Mr Iliev, was also a Bulgarian national and at no point was there any indication that he was not fluent in the language of that Member State.
90. In the third place, it is very contrived to invoke the parallel nature of the formal requirements on the basis of Article 94(b) of the Rules of Procedure of the Court of Justice, in which the national courts or tribunals are asked to include, in addition to the text of the questions referred, the tenor of the national provisions applicable in the case and, where appropriate, the relevant national case-law. Those documents help the Court better to understand the legal question raised before the national court, guidance which is essential for giving, erga omnes, a judgment interpreting a legislative text.
91. It is clear that there is no similarity with opposition proceedings against a trade mark registration. In such proceedings, evidence of and reliance on national law are used to support a right against an opponent’s right, in the context of inter partes administrative proceedings, the outcome of which will affect only those parties. It almost need not be pointed out that the judicial function of the Court of Justice when answering questions referred for a preliminary ruling is not comparable to that of EUIPO’s own bodies.
92. I therefore consider that, in the judgment under appeal, there is no infringement of Article 8(4) of Regulation No 207/2009, read in conjunction with Rule 19(2) of the Implementing Regulation, when it states, in particular in paragraphs 69, 70 and 81 thereof, that there are no formal requirements relating to evidence of national legislation.
93. The second ground of appeal therefore cannot be upheld and, since the first ground of appeal was also rejected, the appeal must be dismissed in its entirety.
94. Under Article 138(1) of the Rules of Procedure of the Court of Justice, EUIPO must be ordered to pay the costs, because it has been unsuccessful and Group OOD has applied for costs.
VI. Conclusion
95. In the light of the foregoing, I propose that the Court should:
(1) Dismiss the appeal;
(2) Order EUIPO to pay the costs of these proceedings.