The General Court of the European Union (GC) affirmed in its decision of 4 June 2015 in Case T-254/13 that the Board of Appeal had lawfully exercised the discretion granted by Art. 76 (2) CTMR to take account of lately filed evidence of use, although the further documents submitted only before the Board of Appeal had no small extent. In the center of the proceedings before the GC were, besides the question whether the Board of Appeal lawfully exercised the discretion granted by Art. 76 (2) of the Trade Mark Regulation (CTMR) when considering proof of use presented for the first time before it, questions about the limits of the similarity of goods.

 The proceedings before OHIM

The applicant had applied for declaration of invalidity of the Community trade mark „Stayer“ (word/device), which was registered at the Office for Harmonization in the Internal Market (OHIM) in 2005 for different tools, materials and construction machines in Classes 7 and 8, as well as for services in Class 39. The applicant had based the application on a likelihood of confusion with its earlier International Registration for the word mark „Stayer“ for goods in Classes 3, 8 and 16 with protection in Germany. The Cancellation Division at OHIM had rejected the request for cancellation, since the Office considered – following the permissible request for proof of use by the defendant – that the applicant failed to prove use of its earlier word mark “Stayer” in Germany. With its appeal, the applicant submitted further documents supporting the use of the word mark “Stayer” in Germany. Following this, the Board of Appeal annulled the decision of the Cancellation Division and partially upheld the request for cancellation, namely with respect to goods in Classes 7 and 8.

 The decision of the GC

The action before the GC was partially successful. Although the GC confirmed the assessment of the Board of Appeal that the applicant had adequately demonstrated the use of her earlier word mark “Stayer” for “trowels”, the Court reversed the decision in part because of lack of similarity between the goods at issue which also led to a lack of likelihood of confusion. In the proceedings in particular the sufficient proof of use of the earlier mark was disputed among the parties. Reason for this was that the applicant had initially before the Cancellation Division only submitted 5 invoices from within the relevant time period, some undated pictures, a catalog, printouts from a website and a declaration from the year 2004. After the applicant failed with its cancellation action before the Cancellation Division, it submitted further proof of use together with its statement of grounds in support of the appeal, namely in particular 6 additional invoices, of which 5 were from the relevant time period. The Board of Appeal was of the opinion that the invoices and pictures submitted before the Cancellation Division, supported use of the earlier mark, at least to a small extent. The Board of Appeal, however, held the remaining documents in support of use submitted before the Cancellation Division to be irrelevant. It held that the originally submitted invoices would together with 5 of 6 invoices submitted before it constitute sufficient proof of use of the older mark for „trowels“. The defendant regarded the taking into account of the proof of used filed before the Board of Appeal a breach of Art. 76 (2) CTMR, particularly as the number and extent of the invoices exceeded the invoices submitted before the Cancellation Division and therefore could not be regarded as mere supplement of the earlier proof of use. The GC rejected the appeal in this regard. The Court initially confirmed that Art. 76 (2) CTMR grants OHIM a wide discretion, when considering not timely submitted facts and evidence. In addition, it pointed out that a cancellation request could be rejected in accordance with Rule 40 (6) of the Implementing Regulation of the CTMR, if within the time-limit set by OHIM either no or only clearly irrelevant documents were submitted. If, however, relevant documents were filed within the prescribed time-limit, the proceedings would continue. As the initially filed documents were relevant, the proceedings continued and additional evidence could be considered, provided that it only complemented the evidence submitted earlier. The General Court confirmed that 5 invoices submitted only before the Board of Appeal could lawfully be taken into account, as they only complemented the earlier evidence, though they evidenced sales of more products sold than the invoices submitted earlier. Firstly, because the number of subsequently filed invoices was as high as the number of invoices already submitted within the initial time period. Secondly, because it was logical that the invoices produced before the Board of Appeal comprised evidence on more sales, as the Cancellation Division had rejected the earlier proof of use as insufficient. Furthermore, the Court confirmed that there was no duty for the applicant to explain why it had not submitted these documents earlier. With respect to the similarity of goods, the Court confirmed the high degree of similarity between “trowels” and “equipment and tools” in class 7. However, unlike the Board of Appeal the Court held the remaining goods in Classes 7 and 8 for dissimilar and annulled the decision insofar. It clarified that also the aspect of complementarity does not mean that all goods that can be used side by side on a construction site, are similar also in the trademark sense.

 Conclusion

The decision shows that the provision of Art. 76 (2) CTMR enables the parties to submit further proof of use before the Board of Appeal in a non-negligible extent. Nevertheless, it remains recommendable to submit comprehensive proof of use within the original time limit set by the Office.