Scope of discretion for late trade mark evidence

Settled law

At a macro level, these decisions confirmed that the Board of Appeal has a wide discretion under Article 76(2) CTMR and further discretion under Rule 50(1) of the Implementing Regulation to consider additional or supplementary facts and evidence not submitted within the Opposition Division's time frame. Further, OHIM's guidelines say the following factors should be taken into account:

• whether the additional evidence is likely to be relevant to the outcome of the opposition;
• the stage of proceedings at which the late submission takes place; and
• whether the circumstances surrounding its inclusion preclude it.

KENZO V Mr Kenzo Tsujimoto

In the Kenzo decisions, the opponent submitted some evidence of reputation prior to the Opposition Division's deadline, however it was deemed insufficient to support notoriety and additional late evidence of use was not considered. The General Court upheld the Board of Appeal's decision to consider the additional material (filed after the deadline), which was originally submitted to satisfy the applicant's request for proof of use and had been filed within that time limit. Indeed, later filed proof of use may supplement earlier filed evidence of reputation and the court considered that the opponent had made genuine attempts to prove reputation prior to the deadline, plus it was irrelevant that the later evidence could have been filed in time.

Notably, the opponent successfully argued that evidence not physically filed in proceedings, but submitted to OHIM in parallel proceedings between the same parties prior to the deadline, could be taken into account; this was also the case where evidence had previously enabled the Board of Appeal to confirm reputation of the earlier CTM and had only been referred to in the notice of opposition and response.

Pinterest v Premium Interest

Key to this case was the substantiation of earlier unregistered rights by Pinterest, who opposed Premium Interest's application for the CTM word mark PINTEREST. OHIM granted Pinterest one time extension to file substantiation evidence, but refused a second request made after Pinterest had appointed a new representative. Prior to the extended deadline, Pinterest filed substantiations and some evidence, including an affidavit from its in-house counsel, an interested party, which featured estimated user and hit figures for the Pinterest service but did not provide independent corroborating sources. Akin to the Kenzo decisions, evidence filed after the deadline was not taken into account by the Opposition Division, which did not consider Pinterest's earlier rights to be substantiated.

On appeal, Pinterest submitted further evidence to corroborate the data in the affidavit; this was accepted by the Board of Appeal, which noted that Pinterest had believed in good faith that their initial evidence of use was sufficient and that the fresh evidence had been filed to tackle OHIM's concerns over the objectivity of the affidavit figures.

Ultimately the Board of Appeal confirmed that additional evidence may be taken into account where it merely supplements relevant but insufficient evidence submitted within the time limit and where the opponent intends to strengthen or clarify the content of the initial evidence. This case has now been returned to the Opposition Division for re-examination, in order to take into account the additional evidence.

Take home message

Whilst these decisions indicate that OHIM is open to considering additional evidence in opposition proceedings, it is clear that acceptance is contingent on it corroborating and strengthening existing relevant evidence. Clients should therefore be prudent to remain vigilant and to submit evidence by given deadlines wherever possible; the price of failing to fulfil such formalities could be crucial.

In short

Relevant arguments must be submitted before the deadline, but additional evidence may supplement or corroborate insufficient evidence in certain cases.

Evidence of use is relevant to evidence of reputation.

Parties are encouraged by the courts to submit evidence by given deadlines.

Case details at a glance

Jurisdiction: European Union
Court: General Court
Parties: Kenzo Tsujimoto v OHIM and Kenzo (France)
Citation: T-322/13 and T-393/12
Date: 22 January 2015
Full decisions: http://dycip.com/t-32213 and http://dycip.com/t-39312

Jurisdiction: European Union
Court: OHIM Second Board of Appeal
Parties: Pinterest, Inc v Premium Interest Ltd
Citation: R 102/2014-2
Date: 24 February 2015
Full decision (pdf): http://dycip.com/R1022014-2