General Court: Decision on meeting genuine use deadlines set by the EUIPO

On 4 May 2018, the General Court (GC) dismissed the action filed by the trademark applicant Skyleader. The GC stated that in revocation proceedings, the EUIPO cannot accept evidence of proof of use which is submitted after the time limit. Further, the EUIPO is not allowed to exercise discretion on whether or not to take such evidence into account. It has no other option than to revoke such trademark if use documents are not filed on time.  

EU Trademark No. 006347827 (word/device mark)

I. Background of the case

On 1 November 2007, Skyleader a.s., a Czech company active in the light aircraft industry applied for the EU Trademark No. 006347827 (word/device mark) for the goods and services in following Nice Classes:

• Class 12: vehicles, apparatus for locomotion by land, air or water
• Class 41: education, providing of training, entertainment, sporting and cultural activities.

On 14 October 2008 the trademark was then registered by the Intellectual Property Office of the European Union (“EUIPO”). But later in 2015, Sky International AG (“Sky”), a Swiss entertainment group, filed an application for revocation for all registered goods and services on the grounds that the trademark had not been genuinely used for the required five-year time period.  The Cancellation Division of EUIPO then set a time limit of three months for the owner of the challenged trademark to submit proof of genuine use, which expired on 13 October 2015.

On 12 October 2015, one day before the end of the deadline, the owner of the trademark filed a two-page fax to the EUIPO. In the fax, Skyleader was seeking to challenge the application for revocation and then, in annexes, listed which proof of genuine use that had been sent to the EUIPO via a courier. These documents, containing proof of use on 211 pages, arrived at EUIPO on 15 October 2015.

On 15 October 2015, the Cancellation Division informed the parties that the submitted documents by Skyleader cannot be taken into account because they did not meet the given deadline. The owner then argued that the fax arrived at EUIPO on time and that the documents had been dispatched by the official post office of the Czech Republic also within the deadline on 7 October 2015. Therefore, Skyleader could not further influence the delivery time.

Nevertheless, the Cancellation Division did not accept this argument and revoked the trademark in its entirety as of 24 June 2015. Against this decision, Skyleader filed a notice of appeal with EUIPO, but, only to be dismissed by the Fourth Board of Appeal of EUPO (“BoA”) on 21 November 2016. The BoA stated that the actual original documents containing proof of use need to arrive by the EUIPO within the time limit, not simply a letter listing them. And if it is not the case, they cannot be taken into account. Further, it was Skyleader´s error that it did not request an extension of the time limit.

II. Ruling by the General Court on genuine use deadlines

Skyleader then brought an action against the decision of the BoA to the General Court (“GC”). On 4 May 2018, the GC came to its decision and assessed to Skyleader´s two main arguments as follows:

a) Misinterpretation and misapplication of the Rule 40 (5) of Regulation No 2868/95 in light of Article 76 (2) of Regulation No 207/2009 (CTMR)

The substance of the case was a different interpretation of the word “may” in following provisions:

- The Rule 40 (5) of Regulation No 2868/95 states that in case of an application for revocation, the EUIPO shall invite the proprietor of the trademark to furnish proof of genuine use. The Office shall further set a period of time in which this has to occur. For the case it is not provided within this period, the Office should revoke the trademark.

- Art. 76 (2) of Regulation No 207/2009 states that EUIPO “MAY” disregard facts or evidence which are not submitted within the time period.

The applicant claimed that the BoA misinterpreted the rules and the meaning of the word “may”. In its view, the word “may” grants the Office the possibility of discretion – to decide whether to take into account evidence which was provided after the deadline - and that this should also apply on the evidence of proof of use in revocation proceedings.

Regarding this, the Court explained that Art. 76 (2) of Regulation No 207/2009 provides a general rule (unless specified otherwise) that the submission of facts and evidence is also possible after the time limit and that the EUIPO is not prohibited from accepting such facts and evidence. Based on the wording, the EUIPO has a wide discretion to decide whether or not take these into account because the provision does not include a regulation of how the time limit is to be set.  The EUIPO then also needs to give reasons for either accepting or refusing such evidence.

On the other hand, the Rule 40 (5) of Regulation No 2868/95 is also clear in its wording. This special provision on submitting evidence of proof of use in revocation proceedings allows the EUIPO to specify the time limit within the proprietor needs to furnish proof of genuine use. But if this is provided after the limit, the EUIPO must revoke that trademark. For such cases, the wording of the provision does not allow the EUIPO to exercise discretion, but, to only automatically reject such delayed evidence. The Court further explained that the EUIPO possesses discretion just in the situation when the party submitted the evidence on time and after the time limit wants to submit some additional evidence.

Therefore, in the case at hand the Court did not consider the cover letter sent by the applicant via fax as a proper proof of use because it did not include real evidence but just a listing it.

As a result, GC upheld the decision of BoA and declared the trademark as correctly revoked from the register due to late submission of proof of use.

b) EUIPO - violation of the principle of sound administration in not informing the applicant of the means for rectifying the late submission of proof of use

In this regard, the Court explained that there is no legal background giving the EUIPO the duty to inform a party of the procedures available to it in order to rectify the late submission of proof of use (Art. 81 and 82 of Regulation No 207/2009). Moreover, all such information for the parties is contained in the Guidelines for Examination in the Office.

As a result, the EUIPO did not violate the principle of sound administration and so the Court dismissed the action filed by Skyleader in its entirety.