Judgment of the Court of Justice (First Chamber) of 24 January 2018

Word mark FITNESS. Application for invalidity. Period for submitting evidence in the EUIPO proceeding.

On 30 May 2005, NESTLE was granted registration of EU word mark “FITNESS” for goods in Classes 29, 30, and 32 of the Nice Agreement.

On 2 September 2011, the undertaking called European Food filed an application for invalidity of the trade mark “FITNESS” on the basis of Articles 52(1)(a) and 7(1)(b) and (c) of Regulation No. 207/2009, where the request for invalidity was dismissed by both the Cancellation Division and the Board of Appeal of EUIPO.

European Food filed an appeal against the EUIPO decision on 19 August 2015 with the General Court of the European Union, which issued a judgment annulling the mentioned decision. EUIPO filed an appeal with the Court of Justice of the European Union, where the fundamental issue discussed was whether the evidence submitted by European Food with the Board of Appeal of EUIPO should have been allowed and taken into consideration to issue the decision dismissing the request for invalidity.

The Judgment acknowledges the authority of the EUIPO to determine periods for submitting evidence within a request for invalidity of a trade mark where such period is not provided for in the Regulation. The grounds can be found in Articles 57 and 78 of Regulation No. 207/2009, from which it can be inferred that during the course of such proceedings, EUIPO shall invite the parties, as often as necessary, to file, within the prescribed time limits, their observations and may also decide on measures of inquiry, including the production of matters of fact or evidence. EUIPO is therefore afforded the opportunity, pursuant to Article 76(2) of Regulation No. 207/2009, to disregard facts or evidence that the parties have not submitted in due time, as established by the Regulation or set by EUIPO.

However, it is also true that it may not in any way prevent the parties from submitting evidence outside the period set by the EUIPO, and specifically, during the appeal stage before the Board of Appeals. The grounds and scope of the opportunity to submit evidence has the following scope and limitation:

  1. The ECJ judgment of 12 March 2007, OHIM/Kaul (C-29/05 P, ECLI:EU:C:2007:162) may not be invoked because it concerns a case of opposition to registration, in which case there is a specific regulation (the content thereof is currently provided in Article 60 of Regulation No. 207/2009), establishing the requirements for filing an appeal with the Board of Appeals, setting the period of four months and the need to submit evidence.
  2. Evidence may be submitted within the period for filing an appeal with the Board of Appeals insofar as said evidence is intended to challenge the reasons given by the Cancellation Division in the contested decision.
  3. It is for the party presenting the evidence for the first time before the Board of Appeal to justify why that evidence is being submitted at that stage of the proceedings and demonstrate that submission during the proceedings before the Cancellation Division was impossible.