Keywords
Summary

Keywords

1. Community trade mark – Appeals procedure

(Council Regulation No 40/94, Arts 62(1) and 74(2))

2. Community trade mark – Appeals procedure

(Council Regulation No 40/94, Arts 62(1) and 74(1) and (2))

Summary

1. It follows from the continuity in terms of their functions between the different departments of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) that, in the context of the review which the Boards of Appeal must undertake of the decisions taken by the OHIM units which heard the application at first instance, the Boards are required to base their decisions on all the matters of fact and of law which the parties put forward either in the proceedings before the department which heard the application at first instance or in the appeal.

Thus the Board of Appeal may grant the appeal on the basis of new facts relied on by the party which brought the appeal or on the basis of new evidence submitted by that party, subject only to Article 74(2) of Regulation No 40/94 on the Community trade mark. The review by the Boards of Appeal is not confined to a review of the legality of the contested decision but, given the devolved nature of the appeal procedure, entails a new assessment of the whole dispute, the Boards of Appeal being required to examine in full the initial application and to take account of the evidence submitted in due time.

In inter partes proceedings the continuity in terms of functions between the different departments of OHIM does not mean that one party is precluded by virtue of Article 74(2) of Regulation No 40/94 from relying before the Board of Appeal on new matters of fact and of law which were not put to the department which heard the application at first instance.

(see paras 58-60)

2. The rule laid down in Article 74(1) of Regulation No 40/94 on the Community trade mark, by which the Office for Harmonisation in the Internal Market (Trade Marks and Designs) examines the facts of its own motion, envisages two limitations. First, in relation to proceedings concerning the grounds for refusal of registration, the examination is limited to the facts relating to the pleas in law and to the claims put forward by the parties. Second, Article 74(2) gives OHIM the discretionary power to disregard evidence which the parties did not submit ‘in due time’.

It follows from the continuity of functions which characterises the relationship between the departments of OHIM, that the phrase ‘due time’ must be interpreted in the context of appeal proceedings before a Board of Appeal as referring to the time-limit for bringing an appeal as well as to the time-limits imposed during the proceedings in question. Since that phrase applies in relation to every procedure pending before OHIM, the expiry of time-limits for the production of evidence imposed by the department hearing the application at first instance therefore remains irrelevant to the issue of whether that evidence was produced ‘in due time’ before the Board of Appeal. The Board of Appeal is thus obliged to take into consideration the evidence that is presented to it, regardless of whether or not it was submitted to the Opposition Division.

(see paras 61-62)