New OHIM criteria on additional evidence submitted late

On 2 June, the OHIM amended the Guidelines relating to opposition proceedings to reflect a change in case law resulting from two Court of Justice judgments delivered in the second half of 2013. The specific sections that have been amended are part C, Sections 1 (procedural matters) and 6 (proof of use). From that date the OHIM began applying the new criteria in all cases in which a decision has not yet been issued.

The judgments in question were that issued on 18 July 2013, in case C-621/11P, «Fishbone» and that issued on 26 September 2013, in case C-610/11P, «Centrotherm», both of which ruled that proof of use submitted after the corresponding term given by the Office to the opponent (i.e. the deadline for submission of proof of use pursuant to rule 22 of the Implementing Regulation) should be considered admissible if certain conditions are met.

The two conditions are:

1. - During the time-limit given to the opponent to submit proof of use, some evidence was submitted and this evidence was to a certain extent relevant.
2. - The opponent is not employing clear delaying tactics to extend the proceedings, or acting with manifest negligence.

Both judgments serve to clarify and substantiate previous judgments delivered by the Court of Justice, such as that of 13 March 2007, OHIM/Kaul (C-29/05 P), which stated that “where OHIM is called upon to give judgment in the context of opposition proceedings, taking such facts or evidence into account is particularly likely to be justified where OHIM 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” (paragraph 44 of the said judgment).

The OHIM’s discretionary powers to take into account evidence submitted late are extended except in cases in which, as the case law indicates, no relevant evidence is submitted within the time limit, or there is negligence or abusive delaying tactics. Under no circumstances is the OHIM obliged to take into account the said evidence. Rather, it can now exercise its discretionary powers and assess whether the evidence can be considered admissible under these conditions. If the evidence is not accepted due to late filing, the Office must set out the reasons for its decision.

In addition to opposition proceedings, the new practice is also applicable to revocation and invalidation proceedings (in fact, the Centrotherm case was based on an application for revocation).

One aspect that could still be improved is, without a doubt, the need to guarantee the other party’s means of defence, which is an area in which the OHIM does not appear to have yet taken the initiative. In this regard, the Office has simply added the following phrase to point 4.5.1 of the Guidelines: “if necessary, a second round of observations will be granted”.

It is not easy to imagine a proceeding in which one party submits proof after the end of the given term and the other party is not granted the right to submit its observations, having to wait for the OHIM’s decision. It is true that the absence of a right to reply does not mean that the proof is accepted as sufficient (judgment of 7 June 2005, T-303/03, ‘Salvita’, paragraph 79), which is reassuring, but we urge the OHIM to place on record in the Guidelines that a right of reply will indeed be given in the case of proof submitted late. There will be plenty such cases, and the issue appears an important one.

Author: Ramón Cañizares

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