Trademarks, Brands, Patents, Designs, Made in Italy, Copyrights, Competition Law, Contracts and Enforcement

17 giugno 2008

A boomerang for the El Corte Inglés

Stefano Sandri

In Case C-29/05 Kaul v OHIM and Bayer, the ECJ stated that hearing an appeal against a decision rejecting an opposition to the registration of a sign as a Community trade mark, the Board of Appeal has a discretion, subject to stating reasons for its decision in that regard, as to whether or not to take account in reaching its decision of facts or evidence which the party opposing registration presents for the first time in the written statement in support of its appeal, with the result that it is neither bound to take account of such facts and evidence, nor can consideration of such facts and evidence be automatically excluded.

Now in case T-420/03, 17 June 2008, El Corte Inglés S.A., v. Jos
é Matías Abril Sánchez et Pedro Ricote Saugar, (BOOMERANG TV), the TPI is more explicity confirming the construction of Article 74 (2) CMR given by the Court.

As a general rule and unless otherwise specified, says the tribunal, the submission of facts and evidence by the parties remains possible after the passing of the time limits to which such submission is subject under the provisions of Regulation No 40/94 and BOAS are in no way prohibited from taking account of facts and evidence which are submitted or produced late. “However, a party has no unconditional right to have such facts and evidence submitted out of time taken into consideration by OHIM. In stating that the latter ‘may’, in such a case, decide to disregard those facts and that evidence, Article 74(2) of Regulation No 40/94 grants OHIM a wide discretion to decide, while giving reasons for its decision in that regard, whether or not to take such information into account” (point 41).

Accordingly, taking facts or evidence submitted out of time into account is particularly likely to be justified where they are likely to be relevant to the outcome of BOAS’ decision. To disregard or taking in consideration facts and evidence, although not submitted in ’ due time’, is not a duty, but an option.
In the contested decision the Board of Appeal did not hold on principle that the documents produced by the appli
cant for the first time before it were ‘inadmissible’, but that it took into account the facts of the case and gave grounds for its decision on that issue. Admittedly, the list of those grounds was brief and the factors referred to by the Board of Appeal did not expressly correspond to those referred to by the Court of Justice in OHIM v Kaul.

However, that does not justify the conclusion that the Board of Appeal infringed Article 74(2) CTMR. (point 46).
Since the Board exercised the broad discretion conferred upon it by Article 74(2), I cannot understand why the decision in comment and the BOARDS are going on in talking of ‘inadmissibility’ or ‘ad
missibility’ for the documents or evidence at issue. As a matter of law Article 74 clearly remits to the grounds that must substantiate any judgement pursuant to Article 73 CTMR.

A part from this, it seems to me that the consolidated construction fits consistently with the assumption (see BABY-DRY case and the following case law ) of the continuity functionality of the Boas and the other instances of OHIM.
Should have known it before, I’d avoid many headache when a few years ago I was chairing the Third Board of Appeal!

Class 46 blog reports also the judgement, but focusing the issue of the difference between the products/services covered by the relevant registrations.

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