Court of Justice of the European Communities (including Court of First Instance Decisions)

JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

28 March 2012 (*)

(Community trade mark - Opposition proceedings - Application for registration of the Community figurative mark OUTBURST - Earlier national word mark OUTBURST - Genuine use of the earlier trade mark - Article 43(2) and (3) of Regulation (EC) No 40/94 (now Article 42(2) and (3) of Regulation (EC) No 207/2009) - Production of evidence for the first time before the Board of Appeal - Article 74(2) of Regulation No 40/94 (now Article 76(2) of Regulation No 207/2009) - Rule 22(2) of Regulation (EC) No 2868/95)

In Case T-214/08,

Paul Alfons Rehbein (GmbH & Co.) KG, established in Glinde (Germany), represented by T. Lampel, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis and P. Geroulakos, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM being

Hervé Dias Martinho, residing in Plessis-Trévise (France),

Manuel Carlos Dias Martinho, residing in Plessis-Trévise,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 13 March 2008 (Case R 1261/2007-2) concerning opposition proceedings between, on the one hand, Paul Alfons Rehbein (GmbH & Co.) KG and, on the other hand, Hervé Dias Martinho and Manuel Carlos Dias Martinho,

THE GENERAL COURT (Fifth Chamber),

composed of S. Papasavvas, President, V. Vadapalas and K. O'Higgins (Rapporteur), Judges,

Registrar: S. Spyropoulos, Administrator,

having regard to the application lodged at the Court Registry on 9 June 2008,

having regard to the response lodged at the Court Registry on 31 October 2008,

having regard to the reply lodged at the Court Registry on 12 January 2009,

having regard to the response of the applicant to the Court's request to produce documents,

having regard to OHIM's reponse to the written question put by the Court,

further to the hearing on 24 November 2011,

gives the following

Judgment

Background

1 On 2 March 2005, Hervé Dias Martinho and Manuel Carlos Dias Martinho filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2 The trade mark in respect of which registration was applied for is the following figurative sign:

3 The goods in respect of which registration was sought are in, in particular, Classes 18 and 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

- class 18: 'Luggage trunks and valises, umbrellas, wallets, purses not of precious metal; hand bags, haversacks, trolley cases with wheels, travel bags, beach bags; vanity cases (not fitted)';

- class 25: 'Clothing, footwear, headgear, shirts, clothing of leather or of imitations of leather, belts (clothing), gloves (clothing), scarves, hosiery, socks, slippers, beach footwear, ski footwear, sports footwear, underwear; jumpsuits, wetsuits for surfing, snow suits'.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 39/2005 of 26 September 2005.

5 On 23 December 2005, the applicant, Paul Alfons Rehbein (GmbH & Co.) KG, gave notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to the registration of the trade mark applied for in respect of all the goods referred to in paragraph 3 above.

6 The opposition was based on the word mark OUTBURST, registered in Germany on 31 August 1999 under number 39940713, for goods in Class 25 of the Nice Agreement corresponding to the following description: 'Clothing, footwear and items of headgear'.

7 The opposition was based on all the goods covered by the earlier trade mark.

8 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

9 On 10 July 2006, Herve Dias Martinho and Manuel Carlos Dias Martinho requested that, in accordance with Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009), the applicant furnish proof that the earlier trade mark had been put to genuine use.

10 In a letter dated 12 July 2006, OHIM asked the applicant to provide such proof within two months, that is by 13 September 2006 at the latest.

11 In response to this letter, the applicant submitted the following evidence on 11 September 2006:

- a written statement by its managing director, dated 25 August 2006, stating that its subsidiary Heinrich Nickel GmbH & Co. KG has been using the earlier trade mark since 2000 extensively for sportswear, giving the volume of sales of clothes bearing that trade mark achieved by that subsidiary for each year during the period 2000-2005 as well as the number of those clothes;

- a list of sales of clothes bearing the earlier trade mark for each year during the period 2000-2005, broken down by customer, a list of the same sales but broken down by type of clothing, various order sheets, delivery notes and invoices; two pages (one of which is dated August 2004) coming from two catalogues published for commercial fairs, photographs of garments, labels of garments and two pages extracted from a sales brochure. All those supporting documents were annexed to the aforementioned affidavit;

- a written statement dated 4 September 2006 by the managing director of a company stating that it had been purchasing sportswear labelled with the earlier trade mark from Heinrich Nickel and had been reselling them 'on an extensive scale' in its retail stores from at least 2000, giving, for each year during the period 2000-2005, the amount of those purchases as well as the number of those clothes which it bought.

12 By decision of 26 June 2007, the Opposition Division rejected the opposition in its entirety on the ground that the applicant had not provided proof of the genuine use of the earlier trade mark.

13 On 8 August 2007, the applicant appealed to OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the Opposition Division's decision. On 23 October 2007, it submitted a statement to OHIM setting out the grounds of the appeal. In an annex to that statement, it included additional evidence to that already provided at first instance.

14 By decision of 13 March 2008 ('the contested decision'), the Second Board of Appeal of OHIM dismissed the appeal. The Board of Appeal held that the evidence presented by the applicant on 11 September 2006 (see paragraph 11 above) was insufficient 'overall' to prove a genuine use of the earlier national trade mark. Referring to Article 43(2) and (3) of Regulation No 40/94 as well as Rule 22(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), the Board of Appeal held that the additional evidence was filed too late, as it had been filed after the expiry of the time-limit set by OHIM (see paragraph 10 above), and that no new factors existed which would be capable of justifying that late submission of evidence. Accordingly, the Board of Appeal held that it was not necessary to examine the conditions for the existence of a likelihood of confusion.

Legal conclusions of the parties

15 The applicant claims that the General Court should:

- annul the contested decision;

- order OHIM to pay the costs.

16 OHIM contends that the Court should:

- dismiss the first plea in law as unfounded;

- if it considers that Rule 22(2) of Regulation No 2868/95 is applicable in the present case, also reject the second plea as unfounded and dismiss the application in its entirety and order the applicant to bear the costs;

- if it considers that Rule 22(2) of Regulation No 2868/95 does not apply in the present case, remit the case to the Board of Appeal in order to exercise its discretion under Article 74(2) of Regulation No 40/94 (now Article 76(2) of Regulation No 207/2009), and order OHIM to bear only its own costs.

Law

17 The applicant relies on two pleas, alleging, respectively, infringement of Article 43(2) and (3) in conjunction with Article 76(1)(f) of Regulation No 40/94 (now Article 78(1)(f) of Regulation No 207/2009) and Rule 22(3) of Regulation No 2868/95, and infringement of Article 74(2) of Regulation No 40/94 in conjunction with Rule 22(2) of Regulation No 2868/95.

18 The first plea poses the question of whether the evidence presented by the applicant before the Opposition Division within the time-limit laid down proved a genuine use of the earlier trade mark to the required legal standard, and the second plea poses the question of whether the Board of Appeal ought to have taken into consideration also the evidence which was filed for the first time before it.

The first plea in law, alleging infringement of Article 43(2) and (3) in conjunction with Article 76(1)(f) of Regulation No 40/94 and Rule 22(3) of Regulation No 2868/95

19 As is clear from the ninth recital in the preamble to Regulation No 40/94, the legislature considered there to be no justification for protecting an earlier trade mark except where the mark has actually been used. In keeping with that recital, Article 43(2) and (3) of Regulation No 40/94 provides that an applicant for a Community trade mark may request proof that the earlier mark has been put to genuine use in the territory where it is protected during the five years preceding the date of publication of the Community trade mark application against which notice of opposition has been given.

20 Under Rule 22(3) of Regulation No 2868/95, proof of use must relate to the place, time, extent and nature of use of the earlier mark (see Case T-325/06 Boston Scientific v OHIM - Terumo (CAPIO) [2008] ECR II-0000, paragraph 27 and the case-law cited).

21 In interpreting the notion of genuine use, it must be remembered that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use in order to be capable of being used in opposition to a trade mark application is to restrict the number of conflicts between two marks, where there is no good commercial justification resulting from a function actually performed by the mark on the market (Case T-174/01 Goulbourn v OHIM - Redcats (Silk Cocoon) [2003] ECR II-789, paragraph 38). However, the purpose of the provisions mentioned in paragraphs 19 and 20 above is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (see, to that effect, Case T-203/02 Sunrider v OHIM - Espadafor Caba (VITAFRUIT) [2004] ECR II-2811, paragraphs 36 to 38 and the case-law cited).

22 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 (see, by analogy, Case C-40/01 Ansul [2003] ECR I-2439, paragraph 43). Furthermore, 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 (VITAFRUIT, cited in paragraph 21 above, paragraph 39; see also, to that effect and by analogy, Ansul, cited above, paragraph 37).

23 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 exploitation of the mark is real, particularly the usages regarded as warranted in the economic sector concerned as a means of maintaining or creating a share in the market 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 (VITAFRUIT, cited in paragraph 21 above, paragraph 40; see also, by analogy, Ansul, cited in paragraph 22 above, paragraph 43).

24 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 (VITAFRUIT, cited in paragraph 21 above, paragraph 41, and Case T-334/01 MFE Marienfelde v OHIM - Vétoquinol (HIPOVITON) [2004] ECR II-2787, paragraph 35).

25 An overall assessment, taking into account all the relevant factors of the case (VITAFRUIT, cited in paragraph 21, above, paragraph 42), must be carried out to examine in any particular case whether an earlier trade mark has been put to genuine use. Moreover, the genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (Case T-39/01 Kabushiki Kaisha Fernandes v OHIM - Harrison (HIWATT) [2002] ECR II-5233, paragraph 47, and Case T-356/02 Vitakraft-Werke Wührmann v OHIM - Krafft (VITAKRAFT) [2004] ECR II-3445, paragraph 28).

26 In the present case, the Board of Appeal held in paragraph 23 of the contested decision that the evidence filed by the applicant on 11 September 2006 (see paragraph 11 above) was insufficient 'overall' to prove genuine use of the earlier mark in Germany within the relevant time period.

27 The applicant, on the other hand, considers that that evidence, taken as a whole, clearly proves such genuine use.

28 OHIM shares the assessment of the Board of Appeal.

29 In order to prove genuine use of the earlier mark, the applicant produced before the Opposition Division a written statement by its managing director, to which a series of supporting documents and a written statement from the managing director of a company which was a customer of its subsidiary Heinrich Nickel were annexed (see paragraph 11 above).

30 As regards the first statement, the Board of Appeal firstly held in paragraph 17 of the contested decision that it cannot have the 'full and complete independent' probative value of a statement in writing within the meaning of Article 76(1)(f) of Regulation No 40/94. The Board of Appeal stated that, in order for such a statement to have such a value, the interested party had to prove that under the law of the State in which it had been drawn up, '[it] qualifie[d] as a "sworn" or "affirmed" statement, or at least, [had] similar effects thereto'. However, in the present case, the opponent did not specify which provisions of German law sanctioned 'a false statement given before [OHIM], in a pending CTM procedure, in the same way as a false sworn statement, made before the German authorities'. Then, in paragraph 18 of the contested decision, the Board of Appeal stated that the mere fact that the statement in question was not made 'in the form provided for' in the abovementioned provision was not, however, sufficient to warrant a conclusion that it was totally devoid of any probative value. OHIM could take it into account in the 'overall assessment' of the documents which were submitted to it, and it could facilitate the 'systematic appraisal' and the comprehension of the various pieces of evidence, as well as supplement the information contained therein. However, the assertions made in the statement had to be supported by additional objective evidence. Finally, in paragraphs 19 to 21 of the contested decision, the Board of Appeal held that the supporting documents annexed to the statement in question, with the exception of the page from one of the two commercial fair catalogues showing the date August 2004, did not sufficiently corroborate the place, time and the extent of use of the earlier trade mark.

31 As regards the second statement, the Board of Appeal firstly noted in paragraph 22 of the contested decision that, although that statement could be considered to be 'admissible evidence', an overall assessment of the material in the file, taking account of all the relevant factors, was necessary. The Board of Appeal then held that 'an affidavit given by a client of the interested party together with a page from a fair catalogue [did] not prove consistent, stable and real use of the mark by the opponent capable of amounting to genuine use of that mark'.

32 Firstly, as far as the statement of the applicant's managing director is concerned, it should be observed that Article 76(1)(f) of Regulation No 40/94 provides, by virtue of the reference to that provision in Rule 22 of Regulation No 2868/95, that proof of use of the mark may be established by 'statements in writing sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up'. It follows that it is necessary to consider the rules of the law of the Member State concerned as to the effects of a written statement only in cases where such a statement has not been sworn or affirmed (Case T-303/03 Lidl Stiftung v OHIM - REWE-Zentral (Salvita) [2005] ECR II-1917, paragraph 40). It is not disputed in the present case that the written statement of the applicant's managing director is a statement that has been affirmed and that, as such, it was held to be admissible by the Board of Appeal. Accordingly, and without it being necessary to examine its effects under German law, that written statement constitutes evidence of the kind referred to in Article 76(1)(f) of Regulation No 40/94, to which Rule 22 of Regulation No 2868/95 refers (Salvita, paragraph 40).

33 Next, the Board of Appeal wrongly held in paragraph 17 of the contested decision that such a statement could have 'full and complete independent' probative value before OHIM only if, under the national law concerned, it qualified as a 'sworn' or 'affirmed' statement, or at least, had similar effects thereto. The Board of Appeal also wrongly refused to give 'full and complete independent' probative value to the written statement of the applicant's managing director on the ground that it had not specified which provisions of German law sanctioned a false statement. There is nothing in either Regulation No 40/94 or Regulation No 2868/95 to support the conclusion that the evidential value of items of evidence of the use of the mark, including affirmations, must be assessed in the light of the national law of a Member State (Salvita, cited in paragraph 32 above, paragraph 42). Indeed, it is clear that OHIM explicitly acknowledged, in response to the General Court's written question, that the assertions contained in paragraph 17 of the contested decision diverged from the position taken in Salvita, cited in paragraph 32 above. OHIM thereby - correctly - admitted that 'irrespective of the position under national law, the evidential value of an affidavit in proceedings before [OHIM was] relative, i.e. its contents [had] to be assessed freely'.

34 However, those errors do not affect the substance of the analysis of the Board of Appeal, since they did not lead it to deny any probative value at all to the written statement of the applicant's managing director. It is apparent from paragraphs 18 to 23 of the contested decision that, as was appropriate (see, to that effect, Salvita, cited in paragraph 32 above, paragraph 41), the Board of Appeal duly took account of that written statement within the context of an overall assessment of the evidence produced in the documents in the case. Admittedly, in paragraph 18 of the contested decision, the Board of Appeal held that that statement was not in itself sufficient and that the assertions made in it had to be supported by additional 'objective' evidence. However, as OHIM rightly contends, that position must be approved, since that statement had been drawn up by the applicant's managing director and not by an independent or third person (see, to that effect, Salvita, cited in paragraph 32 above, paragraphs 43 to 45, and judgment of 16 December 2008 in Case T-86/07 Deichmann-Schuhe v OHIM - Design for Woman (DEITECH), not published in the ECR, paragraph 50). It should be noted in that regard that, in order to assess the evidential value of a document, regard should be had first and foremost to the credibility of the account it contains. It is then necessary to take account, in particular, of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on its face, the document appears sound and reliable (Salvita, paragraph 42, and DEITECH, paragraph 47).

35 In the present case, the written statement of the applicant's managing director contains evidence of use of the earlier mark, relating to the place (Germany), time (2000-2005), extent (turnover by year and number of items sold per year) and nature of the designated products (sport clothing, including jackets, raincoats, ski clothing, trousers, jeans, t-shirts ...). As the Board of Appeal rightly concluded, that evidence is not, however, sufficiently corroborated by the documents annexed to that statement.

36 The list of annual sales made during the period from 2000 to 2005, broken down by customers, and the same list, broken down by type of clothing, not only emanates from the applicant itself, but does not contain any reference to the earlier mark. The order forms, delivery notes and invoices, not only do not mention the earlier mark, as indeed the applicant expressly acknowledged in its pleadings, but also only concern the years from 2004 until 2006. The only mark which appears in those latter documents is the figurative mark Nickel Sportswear. The photographs and the labels of clothes do not provide any information on the place, time and quantity of products actually sold under the earlier mark, a fact which, moreover, the applicant expressly accepts in its pleadings. The same is true of the second of the two pages extracted from commercial fair catalogues and the two pages from the sales brochure. As regards that latter brochure, it should be noted, in particular, that its mere existence neither establishes that it was distributed to a potential German clientele, nor the extent of any distribution, nor the number of sales made of goods protected by the earlier mark (see, to that effect, VITAKRAFT, cited in paragraph 25 above, paragraph 34). The fact that one of the pages from one of the two abovementioned catalogues is dated August 2004 is of some slight relevance. However, it is clearly insufficient in itself because it does not provide any evidence of the extent of use of the mark.

37 The applicant cannot credibly claim that the evidence contained in the written statement of its managing director is capable of remedying the shortcomings noted in paragraph 36 above. As OHIM rightly observes, it is the evidence contained in the written statement that must be corroborated by other evidence and not vice versa.

38 Next, the written statement of the managing director of a customer of the applicant's subsidiary is sufficient on its own to attest to certain facts because it comes from a third party in relation to the applicant. However, as the Board of Appeal rightly held in paragraph 22 of the contested decision, that statement, which only relates to certain purchases made by just one customer of a subsidiary of the applicant, establishes the existence of a very limited use of the earlier mark in Germany during the relevant period.

39 Having regard to the findings made in paragraphs 34 to 38 above, it must be held, as did the Board of Appeal, that, considered as a whole, the various pieces of evidence adduced by the applicant before the Opposition Division within the time-limit laid down are not sufficient to prove that the earlier mark has been put to extensive, consistent and real use in Germany during the relevant period. Therefore, it must be held that the Board of Appeal did not commit an error in taking the view that proof of genuine use of the earlier mark had not been adduced in the present case within the prescribed time-limit.

40 The first plea in law must therefore be dismissed.

The second plea in law, alleging infringement of Article 74(2) of Regulation No 40/94 and Rule 22(2) of Regulation No 2868/95

41 As set out in Article 74(2) of Regulation No 40/94, OHIM may disregard facts or evidence which are not submitted in due time by the parties concerned.

42 According to settled case-law, it is clear from the wording of Article 74(2) of Regulation No 40/94 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 OHIM is in no way prohibited from taking account of facts and evidence which are submitted or produced late (Case C-29/05 P OHIM v Kaul [2007] ECR I-2213, paragraph 42; Case T-407/05 SAEME v OHIM - Racke (REVIAN's) [2007] ECR II-4385, paragraph 56; and Case T-86/05 K & L Ruppert Stiftung v OHIM - Lopes de Almeida Cunha and Others (CORPO livre) ECR II-4923, paragraph 44).

43 The possibility for parties to proceedings before OHIM to submit facts and evidence after the expiry of the periods specified for that purpose is conditional upon there being no provision to the contrary. Only if that condition is met does OHIM have a discretion - attributed to it by the Court of Justice when interpreting Article 74(2) of Regulation No 40/94 - to take into account facts and evidence submitted out of time (CORPO livre, cited in paragraph 42 above, paragraph 47).

44 In the present case, there is a provision which precludes the taking into account of material submitted for the first time to the Board of Appeal by an opponent, namely Article 43(2) and (3) of Regulation No 40/94, as implemented by Rule 22(2) of Regulation No 2868/95. That provision provides as follows:

'Where the opposing party has to furnish proof of use or show that there are proper reasons for non-use, [OHIM] shall invite him to provide the proof required within such period as it shall specify. If the opposing party does not provide such proof before the time limit expires, [OHIM] shall reject the opposition.'

45 It is apparent from the second sentence of that provision 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 OHIM having a discretion in that regard. Genuine use of the earlier mark is a preliminary matter which must as such be settled before a decision is taken on the opposition proper (CORPO livre, cited in paragraph 42 above, paragraph 49).

46 However, the General Court has 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 exist, even if such evidence is adduced after the expiry of that time-limit (HIPOVITON, cited in paragraph 24 above, paragraph 56, and CORPO livre, cited in paragraph 42 above, paragraph 50).

47 In the present case, in paragraphs 27 to 29 of the contested decision, the Board of Appeal, relying on the principles set out in paragraphs 41 to 46 above, held that it did not have any discretion allowing it to take into account the evidence submitted to it for the first time by the applicant because no new factor existed to justify that late submission.

48 The applicant is of the view that that evidence ought to have been taken into account by the Board of Appeal, since it merely supplemented and explained the evidence which it had produced before the Opposition Division within the time-limit set. The applicant claims that the principles laid down in HIPOVITON, cited in paragraph 24 above, apply not only where the evidence submitted late was not available before the expiry of the time-limit set or where the applicant for a Community trade mark has referred to new facts or successfully countered the opponent's evidence, but also where the Opposition Division has held the latter evidence to be insufficient.

49 OHIM is in agreement with the arguments of the Board of Appeal outlined in paragraph 47 above. It suggests, however, that Rule 22(2) of Regulation No 2868/95 be interpreted as allowing the Boards of Appeal, regardless of the existence of 'new factors', to accept the evidence produced for the first time before them where that evidence is 'purely complementary', that is only evidence intended to supplement evidence provided at first instance within the time-limit set. That interpretation would seem to satisfy the criteria laid down by the Court in OHIM v Kaul, cited in paragraph 42 above, for the admission of evidence submitted late and to correspond to the 'spirit' of that judgment. OHIM accepts that, if such an interpretation had to be adopted in the present case, it would be appropriate to hold that the Board of Appeal wrongly concluded that it did not have any discretion in the matter and consequently to uphold the second plea in law and annul the contested decision. During the hearing, OHIM added that that interpretation was consistent with the approach adopted by the General Court in its judgment of 29 September 2011 in Case T-415/09 New Yorker SHK Jeans v OHIM - Vallis K. - Vallis A. (FISHBONE), not published in the ECR, and Case T-308/06 Buffalo Milke Automotive Polishing Products v OHIM - Werner & Mertz (BUFFALO MILKE Automotive Polishing Products) [2011] ECR II-0000, and stated that it left it to the General Court to decide whether it was appropriate to also adopt that interpretation in the present case.

50 It is common ground between the parties and it is apparent from the documents in the case that the applicant had produced before the Opposition Division, within the time-limit laid down, relevant evidence intended to prove the genuine use of the earlier trade mark and believed in all good faith that it was sufficient to substantiate its claims.

51 It is also common ground between the parties and apparent from the documents in the case that the evidence presented for the first time by the applicant before the Board of Appeal in an annex to its statement setting out the grounds of the appeal, by means of which it sought a complete new examination of the case, was simply intended to strengthen or to clarify the content of the initial evidence. That evidence was not, therefore, the first and only evidence of use of the mark.

52 In the light of the arguments set out in paragraphs 50 and 51 above, it should be held that, in the present case, contrary to its finding in the contested decision, the Board of Appeal did have discretion allowing it to take or not take into account the additional evidence submitted with the statement setting out the grounds of the appeal.

53 Rule 22(2) of Regulation No 2868/95 must be understood as not precluding the admission of additional evidence which merely supplements other evidence submitted within the time-limit laid down from being taken into account, where the initial evidence was not irrelevant, but was held to be insufficient. Such reasoning, which in no way renders the above rule superfluous, is all the more appropriate because the applicant did not abuse the time-limits by knowingly employing delaying tactics or by demonstrating manifest negligence, and because the additional evidence which it submitted merely corroborated the evidence resulting from the affirmations which were submitted within the time-limits.

54 Such an interpretation is not inconsistent with the case-law mentioned in paragraph 46 above, in which the facts of the case were different. In the case giving rise to the judgment in HIPOVITON, cited in paragraph 24 above, the evidence had been submitted by the opponent within the set time-limit. At a later stage, the party which had requested registration of the mark raised new facts and arguments in its statement which was submitted to the Board of Appeal. However, the General Court criticised the Board of Appeal for not asking the opponent to respond to that statement and held that the opponent had been deprived of the possibility of considering whether to adduce additional evidence. The General Court added that the Board of Appeal had therefore not been able to take all the relevant factors into account in order to assess whether the use made of the mark could be classified as genuine and that it had relied on an incomplete factual basis (HIPOVITON, cited in paragraph 24 above, paragraphs 54 and 58). In the case giving rise to the judgment in CORPO livre, cited in paragraph 42 above, in holding that OHIM did not have any discretion to take into account the evidence submitted after the set time-limit, the General Court expressly stated that that evidence 'was not additional evidence, but constituted the initial and only proof ... of use' of the earlier marks invoked in that case (CORPO livre, cited in paragraph 42 above, paragraph 50).

55 Moreover, the conclusion that the Board of Appeal was entitled to take into account the additional evidence submitted to it by the applicant on 23 October 2007 is entirely consistent with the principles laid down by the Court of Justice in OHIM v Kaul, cited in paragraph 42 above. Thus, in paragraph 44 of that judgment, the Court of Justice stated that, where OHIM is called upon to give judgment in the context of opposition proceedings, taking facts or evidence submitted out of time into account is particularly likely to be justified where OHIM considers, first, that those facts or evidence are, 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 are not counter-indicative of matters being taken into account.

56 Furthermore, in OHIM v Kaul, cited in paragraph 42 above, the Court of Justice found that the 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, in order to avoid registration of marks which might subsequently be cancelled (see, to that, effect, paragraphs 48, 57 and 58 of that judgment). 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.

57 It follows from all the foregoing considerations that the second plea in law must be upheld.

58 Therefore, the contested decision must be annulled.

59 Furthermore, OHIM has proposed, in the alternative, that the General Court should refer the case back to the Board of Appeal. It should be noted, however, that, in connection with an action brought before the General Court against the decision of the Board of Appeal, it follows from Article 65(6) of Regulation No 207/2009 that OHIM is to take the necessary measures to comply with the judgment of the General Court. Therefore, that head of claim must be rejected.

Costs

60 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party's pleadings.

61 In the present case, since OHIM has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.

On those grounds,

THE GENERAL COURT (Fifth Chamber)

hereby:

1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 13 March 2008 (Case R 1261/2007-2);

2. Orders OHIM to pay the costs.

Delivered in open court in Luxembourg on 28 March 2012.

[Signatures]

* Language of the case: English.

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