Case T-308/06

Buffalo Milke Automotive Polishing Products, Inc.

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Opposition proceedings – Application for Community figurative mark BUFFALO MILKE Automotive Polishing Products – Earlier national figurative mark BÚFALO – Production of evidence for the first time before the Board of Appeal – Discretion granted by Article 74(2) of Regulation (EC) No 40/94 (now Article 76(2) of Regulation (EC) No 207/2009) – Genuine use of the earlier mark – Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009))

Summary of the Judgment

1.      Community trade mark – Procedural provisions – Opposition proceedings – Facts and evidence not submitted in support of the opposition within the prescribed time-limit – Account taken – Discretion of the Board of Appeal – Absence of any provision to the contrary

(Council Regulation No 40/94, Art. 74(2); Commission Regulation No 2868/95, Art. 1, Rule 22(2))

2.      Community trade mark – Procedural provisions – Opposition proceedings – Facts and evidence not submitted in support of the opposition within the prescribed time-limit – Account taken – Conditions – New factor

(Council Regulation No 40/94, Art. 74(2); Commission Regulation No 2868/95, Art. 1, Rule 22(2))

3.      Community trade mark – Observations of third parties and opposition – Examination of the opposition – Proof of use of the earlier mark – Genuine use – Concept – Criteria for assessment

(Council Regulation No 40/94, Art. 43(2) and (3))

1.      It is clear from the wording of Article 74(2) of Regulation No 40/94 on the Community trade mark 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 that regulation and that the Office for Harmonisation in the Internal Market (Trade Marks and Designs) is in no way prohibited from taking account of facts and evidence which are invoked or produced late.

However, it is equally apparent from that wording that the fact that a party has invoked or produced facts and evidence out of time does not confer on it an unconditional right to have those facts and evidence taken into consideration by the Office. Where the Office is called upon to give a decision in the context of opposition proceedings, taking such facts or evidence into account is particularly likely to be justified where the Office 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 brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account.

The possibility for parties to proceedings before the Office to submit facts and evidence after the expiry of the periods specified for that purpose is subject to the condition that there is no provision to the contrary. It is only if that condition is met that the Office has the discretion – attributed to it by the Court of Justice when interpreting Article 74(2) of Regulation No 40/94 – as regards the taking into account of facts and evidence submitted out of time.

However, by using the expression ‘unless otherwise specified’ in connection with provisions possibly limiting the Office’s discretion under Article 74(2) of Regulation No 40/94, the Court of Justice, in the judgment of 13 March 2007 in Case C‑29/05 P OHIM v Kaul, did not indicate expressly which provisions of Regulation No 40/94 were being referred to. Nor did it clarify whether that expression also encompassed Regulation No 2868/95 implementing Regulation No 40/94 and, in particular, Rule 22(2) of Regulation No 2868/95.

It should be pointed out that, Regulation No 2868/95 having been adopted by the Commission, in accordance with Article 140(1) of Regulation No 40/94, its provisions must be interpreted in accordance with the provisions of the latter regulation.

Accordingly, to submit, on the basis of Rule 22(2) of Regulation No 2868/95, that the Board of Appeal is required to exclude documents produced late and cannot apply Article 74(2) of Regulation No 40/94 would amount to reliance on an interpretation of a rule of the implementing regulation which is contrary to the clear wording of the general regulation.

Moreover, it is consistent with the spirit of OHIM v Kaul to preserve the possibility of additional evidence being accepted. In that case, the Court of Justice found that acceptance of evidence submitted late was justified on the basis of the principles of legal certainty and the sound administration of justice, pursuant to which the examination of the substance of an opposition must be as complete as possible, so as to avoid registration of marks which might subsequently be cancelled. Accordingly, those principles may prevail over the principle of procedural efficiency which underlies the need for compliance with time‑limits, if the circumstances of the individual case so warrant.

It follows that Rule 22(2) of Regulation No 2868/95 cannot be regarded as a ‘provision specifying otherwise’ for the purposes of OHIM v Kaul.

(see paras 22-24, 31-36)

2.      It is true that the General Court has already held that Article 43(2) and (3) of Regulation No 40/94 of the Community trade mark, as implemented by Rule 22(1) of Regulation No 2868/95 implementing Regulation No 40/94, in the version applicable before its amendment by Regulation No 1041/2005, now Rule 22(2) of the same regulation, following amendment, provides that submission of proof of use of the earlier mark after the expiry of the period specified for that purpose results, in principle, in the rejection of the opposition without the Office for Harmonisation in the Internal Market (Trade Marks and Designs) having a discretion in that regard.

However, the General Court has also held that the second sentence of Rule 22(2) of Regulation No 2868/95 cannot be interpreted as precluding additional evidence from being taken into consideration where new factors emerge, even if such evidence is adduced after the expiry of that time-limit.

Even if the acceptance of proof of use provided late had to be made subject to the appearance of a ‘new factor’, there may be valid reasons which support acceptance of such proof where the ‘new factor’, as referred to in the judgment of 12 December 2007 in Case T-86/05 CORPO livre, is the decision of the Opposition Division. In cases where the opponent produces relevant initial evidence within the period prescribed, judging in all good faith that it is sufficient to substantiate its claims, and learns only by the decision of the Opposition Division that that evidence has been deemed insufficient, there is no valid reason preventing the opponent from substantiating or clarifying the content of the initial evidence with additional evidence when it requests the Board of Appeal to carry out a new, full examination of the case.

The argument that opponents, which assume the burden of proof and must discharge that burden, are in general able to submit complete evidence from the beginning of the proceedings, in conjunction with their observations, is unconvincing. By definition, in all cases where evidence is submitted late, there is also a failure to comply with the time‑limit initially prescribed. If mere non‑compliance with the time‑limit were sufficient to exclude the possibility of submitting additional evidence, Article 74(2) of Regulation No 40/94 would never be applicable and would therefore be rendered meaningless.

(see paras 37-41)

3.      There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. In that regard, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly.

When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark.

As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use.

The question whether use is sufficient to maintain or create market share for the goods or services protected by the mark thus depends on several factors and on a case‑by‑case assessment. The characteristics of those goods and services, the frequency or regularity of the use of the trade mark, whether the mark is used for the purpose of marketing all the identical goods or services of the proprietor or merely some of them, or evidence of use which the proprietor is able to provide, are among the factors which may be taken into account.

To examine whether an earlier trade mark has been put to genuine use, a global assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence between the factors taken into account. Thus, the low volume of goods marketed under the mark may be offset by a high intensity or a settled period of use of that mark or vice versa. In addition, the turnover and the volume of sales of the goods under the earlier trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the goods or services on the relevant market. As a result, use of the earlier mark need not always be quantitatively significant in order to be deemed genuine.

Moreover, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but has to be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned.

(see paras 47-52)