How to justify decisions while rejecting evidence

Author: Tomasz Rychlicki (Patent and Trade Mark Attorney, Poland)

CEDC International sp z oo v Office for Harmonisation in the Internal Market, Case T-235/12, ECLI:EU:T:2014:1058, General Court of the European Union, 11 December 2014

Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv081, first published online: May 5, 2015

The General Court has clarified rules on the basis of which the Office for Harmonisation in the Internal Market (OHIM) may reject material evidence supplied by the proceedings party after the expiry of the prescribed time-limit.

Legal context

Articles 75, 76(1) and 76(2) of Council Regulation 207/2009 on the Community trade mark (CTMR) provide that decisions of the Office for Harmonisation in the Internal Market (OHIM) must state the reasons on which they are based. In proceedings before OHIM, the Office examines the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, OHIM is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. The Office may disregard facts or evidence which are not submitted in due time by the parties concerned.


Underberg AG applied to register a three dimensional CTM in class 33 for goods such as spirits and liquors. The sign was described as a greenish-brown blade of grass in a bottle, the length of the blade of grass being approximately three-quarters of the height of the bottle.

The Polish company Przedsiębiorstwo Polmos Białystok (Spółka Akcyjna), which was replaced by the applicant, CEDC International sp z oo, following a merger by acquisition in 2011, opposed. Polmos Białystok based its opposition, inter alia, on an earlier three-dimensional French mark registered for goods in class 33 such as alcoholic beverages. The French trade mark was described as a bottle inside which a blade of grass was placed almost diagonally. The opponent also relied on other national registrations valid in Germany, Poland, Japan and France and different unregistered signs claimed in various Member States of the EU.

The opposition was fully dismissed by the OHIM. According to the Office, the evidence was insufficient in order to establish genuine use of the earlier three-dimensional French mark and that the mark in which it was registered was transformed by the existence of the word ‘żubrówka’ on the label as well as by the portrayal of a bison on its marketed bottles.

CEDC appealed against the decision of the Opposition Division and, two months later, it lodged its statement setting out the grounds of the appeal, appended to which was evidence of use which had not been adduced before the Opposition Division.

The OHIM Board of Appeal dismissed the appeal in its entirety. CEDC brought an action before the General Court claiming, inter alia, infringement of Articles 75 and 76(1) of the CTMR.


The Polish company argued that OHIM did not examine certain facts and failed to point out the grounds for such action, in that it did not take into consideration representations of the product from different perspectives presented by the trade mark applicant. Further, a variety of press articles and messages published on websites which showed the blade of grass in a bottle were disregarded by OHIM as being evidence that French consumers regarded the blade of grass as a distinctive feature which related to the nature of use of the mark. CEDC argued that the Board of Appeal did not criticize the admissibility of the evidence appended, but failed to provide the reasons for its assessment of the admissibility of that evidence. As OHIM did not do so, no criticism as to the admissibility of the evidence had been made. CEDC argued that, since the Board of Appeal neither rejected the evidence nor denied its probative value, it was obliged to take it into account and examine it. Failure to do so constituted an infringement of Articles 75, 76(1) and 76(2).

The plea was ruled lawful by the General Court in that the Board of Appeal did not exercise its discretion with an objective way to conclude whether any evidence in addition to that provided for the first time after the time-limit set by the Opposition Division was required. The court noted that, if the Board of Appeal did not exercise its discretion, it could not have stated that the evidence was admissible.

The court also ruled that OHIM was incorrect in replying that, because the Board of Appeal did not include that new evidence in its assessment of the nature of use that must be construed as meaning that it decided not to take it into account. In fact, as the Board of Appeal did not exercise its discretion, it could not have made an implicit finding that that evidence was admissible. Even if it could be considered that OHIM did exercise its discretion as to whether or not to allow the evidence, it must be borne in mind that, according to the case-law, where OHIM exercises its discretion to decide whether to take into account a document that has been submitted out of time, it must give reasons for its decision on the matter. Further, using the term ‘among others’ could not be treated as an objective exercise of such discretion when used for dismissing that evidence.

The court annulled the challenged decision and remitted the appeal to OHIM in order to judge if any evidence in addition to that provided by the applicant for the first time should be considered so that a decision could be made, in view of the guidance from the case law and the present judgment, as well as taking into account circumstances and presenting reason for the decision.

Practical significance

The conclusions presented in this judgment will undoubtedly contribute to increased legal certainty and sound administration in the case of a decision issued by OHIM, in particular through the obligation to justify its decisions in the context of all the evidence presented by the party to opposition proceedings.

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