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Judgment of the General Court 22 September 2011, case T-250/09, MANGINI/MANGIAMI
We hereby publish a recent decision of the General Court of the European Union (Seventh Chamber - Judgment of 22 September 2011) concerning the admissibility of earlier mark’s proofs of use in the cancellation proceedings of a CTM.
The facts of the case are briefly summarized as follows.
In 2006, acting for CESEA GROUP, we filed an opposition to the Community Trademark MANGINI based on the Community Trademark MANGIAMI. Counterparty brought, in response, an action for cancellation of our client’s CTM on the basis of Italian, French and German national priorities.
We won at first instance, and the cancellation was rejected for lack of evidence of use.
That decision was reversed on appeal: the board of appeal deemed (now we can say wrongly) that the counterparty could integrate with additional documentation produced on appeal the evidence of use produced in the first instance proceedings.
This possibility was accepted by the Board of Appeal because at that time the majority of case-law supported the view that new evidence could be presented during the appeal, following the infamous interpretation of the so called “functional continuity” between the decisions of the Opposition Division and the cognition of the Board of Appeal. The Board of Appeal's discretion in admitting new evidence was stated In several decisions , e.g. the KLEENCARE (T-308/01) and ARCOL (C-29/05) cases. So, it seemed that there was broad discretion by the Boards in admitting any kind of evidence.
In the present case, the Board took to the extreme consequences its right in admitting proofs of use not produced during the opposition proceedings (or, as is the case here, during the cancellation proceedings). The Board thought it were possible to admit new evidence in presence of two elements:
a) a new fact to justify the new evidence;
b) the new evidence had to be crucial for the decision.
The decision now reformed stated to identify the "new fact" in the grounds of the decision of the Cancellation Division, which held that insufficient evidence were filed by the applicant for cancellation.
The General Court in its ruling of 22.09.2011 has instead stated a principle of procedural safeguards under which if the deadline to produce the evidence of use is missed in the first degree, this deadline cannot be waived in the next stage of the proceedings. The “new fact” can not be found in the decision to appeal.
The discretion of the Board of Appeal is therefore now limited to the instances where there are no time-limits set by mandatory provisions. Rule 22.2 and the corresponding Rule 40.6 of the Community Implementing Regulation on time-limit to submit proof of use is a provision that can not be waived. Who does not provide sufficient evidence of use in the opposition or cancellation proceedings can no longer do it on appeal (unless a new fact emerges, to be evaluated in a rigorous way).
The present decision may be appealed by the OHIM before the Court of Justice over the next two months.
Here the full text of the sentence in Italian (language of the case), and here its unofficial translation into English.