Hetec v Heitec: General Court provides primer on time limits and proof of genuine use

Par Richard Milchior, le 28 mars 2022

Article publié dans World Trademark Review

– Although the submission of new evidence is possible after the expiration of the deadline, this does not grant an unconditional right to have such evidence examined

– The fact that evidence filed late complements other evidence is not sufficient for such evidence to be taken into consideration

– Legal professionals have a duty of vigilance

On 9 February 2022 the General Court issued its decision in Heitec AG v European Union Intellectual Property Office (EUIPO) (Case T-520/19).

Background

The trademark HEITEC was registered and renewed as an EU trademark in Classes 9, 16, 35, 41 and 42 by Heitec AG. On 15 September 2016 Hetec Datensysteme GmbH filed a revocation request for lack of use based on Article 51(1)(a) of Regulation 207/2009 with regard to all the products and services registered.

On 26 September 2016 the EUIPO requested that Heitec file evidence of use before 26 December 2016. The time limit was then extended to 26 February 2017. On 2 February 2017 items of evidence 1 to 7 were filed.

Hetec filed its observations on the evidence and Heitec was granted until 17 July 2017 to reply. That deadline was extended again until 31 July 2017. On 30 July Hetec filed a request explaining that a secretary had been off sick since 27 July and requesting another short extension until 4 August. This request was rejected on 7 August due to a lack of exceptional circumstances. However, for “equity reasons”, the deadline was postponed until 10 August. On 4 August Heitec filed its observations, along with new items of evidence (8 to 10).

The Cancellation Division of the EUIPO cancelled the mark on 5 June 2018, with effect from 15 September 2016; it refused to take into consideration items 8 to 10, as their late filing was considered “dilatory or negligent”.

Heitec challenged the decision, submitting new items of evidence (11 to 15) in its appeal brief.

The Board of Appeal of the EUIPO dismissed the appeal on 23 April 2019. It rejected items 11 to 15 because they were either irrelevant or did not complement the other evidence. Further, the board confirmed that the Cancellation Division was correct not to take items 8 to 10 into consideration since the deadline to file evidence was that granted by the EUIPO under Rule 40(5) of Regulation 2868/95. In this case, this meant that the first deadline, which had been extended until 26 February 2017, was final. There was no legitimate motive for the late filing. The board also rejected items 1 to 7 for various reasons.

The decision was appealed, and the key issues were:
–  the admissibility of the late evidence; and/or
–  the probatory value of the various items evidence.

General Court decision 

Admissibility

The court first clarified the issue of the applicable texts and stated that, based on the date of filing of the cancellation request (15 September 2016), the applicable material rules were those of Regulation 207/2009; however, it noted that procedural rules become applicable at the date on which they enter into force. As a consequence, the applicable material rules were not Articles 18 and 58 of Regulation 2017/1001, as claimed by Heitec, but Article 15 and 51 of Regulation 207/2009. In any case, they were identical.

Concerning the procedural rules, Article 95 of Regulation 2017/1001 was applicable at the time of the proceedings before both the Cancellation Division and the Board of Appeal. However, based on the relevant dates, Regulation 2868/95 was still applicable to the first claim and Regulation 2018/625 was applicable to the evidence produced for the first time before the board.

Substance

Heitec made three claims before the General Court.

First claim

Heitec claimed that the board had violated Article 95(2) of Regulation 2017/2001 by not examining the items of evidence 11 to 15.

The court recalled that, although the submission of new evidence is authorised after the deadline provided in Regulation 2017/1001, this does not grant an unconditional right to have such evidence examined by the EUIPO. It added that, in the case of cancellation proceedings for lack of use based on Article 51(1)(a) of Regulation 207/2009, no deadline is specifically mentioned concerning the submission of evidence. However, Article 40 of Regulation 2868/95 specifies that the EUIPO must request proof of use within a certain period and that the mark will be cancelled in the absence of such proof; such conclusion cannot be drawn if some evidence is provided during the time limit granted by the EUIPO. As a consequence, additional evidence can be submitted after the time limit has expired and may be taken into consideration.

Nevertheless, Article 27(4) of Regulation 2018/625 limits the power of the Board of Appeal to do so by adding two additional tests:
1. the evidence must be pertinent; and
2. it must complement the evidence already introduced, or contradict the conclusions of the first-instance decision.

The items of evidence 11 to 15 were examined on that basis. The court recalled that they were produced late and that the board had used its power under Article 27, as mentioned above. The court accepted that the board rejected items 11 to 15 on the ground that the dates were handwritten, without any other confirmation, and that the evidence did not show that it concerned the relevant period. In addition, items 11, 13, 14 and 15 did not give sufficient information about the products or services offered under the contested mark, since they consisted only of the covers of advertising brochures.

The court added that Heitec should have explained precisely, clearly and unequivocally why the evidence was pertinent. This was not done, as Heitec referred only to the fact that these items had to be examined together with the other evidence. The court also refused the argument that the evidence was valid since it had not been challenged by Hetec. This was wrong in fact and in law, as genuine use must be proven by the owner of the mark. The first test was thus not met.

Concerning the second test, Heitec claimed that the EUIPO had not clearly specified the kind of evidence needed. The court disagreed, noting that the EUIPO had quoted the applicable rules and was not expected to list in detail the type of evidence requested. In addition, Heitec did not contest the fact that items 12 and 13 did not complement the other evidence.

Consequently, the court concluded that the board had correctly rejected items 11 to 15.

Second claim

Heitec claimed that the Board of Appeal had violated Article 95(2) of Regulation 2017/2001 by confirming the rejection of items of evidence 8 to 10, which the Cancellation Division had rejected for being submitted late.

Heitec claimed that it had submitted items 8 to 10 on 4 August 2017 and that it could do so until 10 August. Even if they had been submitted late, they should have been taken into consideration as they constituted complementary evidence. The court explained that Heitec had wrongly considered that the deadline expired on 10 August based on Rule 40(5) of Regulation 2868/95. The deadline based on this rule had in fact expired on 26 February 2017, after being extended. In addition, the EUIPO had explained in a letter dated 26 September 2016 the consequence of a lack of production of evidence before the deadline. The fact that a new deadline was granted to reply to observations did not mean that new evidence could be filed. Rule 40 clearly distinguishes between the deadline provided in Paragraph 5 to file evidence of use and that provided in Paragraph 3 to reply to observations. Therefore, the board had rightly decided that the deadline had expired on 26 February 2017 and that items 8 to 10 were submitted too late.

In addition, if evidence is submitted late, there is no unconditional right to have the evidence taken into consideration. On the contrary, the conduct of the procedure and the circumstances may be taken into consideration to assess whether the evidence should be taken into consideration. The fact that evidence filed too late complements other evidence is a prerequisite to it being taken into consideration, but not a sufficient condition for such evidence to be considered. The rejection of items 8 to 10 was based on other factors, such as the examination of the regular conduct of the procedure. The court then recalled that the deadline of 4 August 2017, extended in equity to 10 August, was just a time limit to reply to observations, and not to file new evidence. In addition, concerning this extension, it noted that the employee became sick on 27 July, but it was only on 30 July that an extension was requested. The court stressed that, generally, legal professionals have a duty to be organised and that those in charge of the case knew since February that they had to reply by 31 July – meaning implicitly that they should not have waited until 27 July to start working on the reply.

It is not the first time that the General Court has stigmatised the poor organisation of certain legal professionals and explained that it can place a liability upon them. The court stated that Heitec should have known that its request for extension was going to be rejected. Consequently, the rejection of items 8 to 10 was confirmed.

Third claim

Heitec claimed that the Board of Appeal had violated Article 51(1)(a) of Regulation 207/2009, combined with Article 40(5) and Article 22(2) to (4) of Regulation 2868/95, by refusing to consider that all the evidence taken together demonstrated the genuine use of the contested mark.

After summarising the rules and case law concerning proof of genuine use, the court examined items 1 to 7; the relevant period spanned from 15 September 2011 to 14 September 2016. It decided first that items 1 to 3 (excerpts from the commercial register and the certificate of registration of the mark) did not prove the genuine use of the mark; the first two only proved use as a commercial name.

Further, the invoices produced in item 4 did not concern the relevant period, except for three of them. However, their wording was not understandable by a layman and could not be linked to the use of the mark for the products and services at stake. This shows once again how important it is for the persons in charge of intellectual property and those in charge of accounting to communicate.

In addition, two of the three magazines filed as item 5 concerned the relevant period, but had only a limited probatory value. The repeated use of the word ‘Heitec’ was use of a commercial name, and the information in the magazine was so general that it could not be linked to any specific products or services mentioned in the trademark registration. Item 6 (brochures) and 7 (excerpt from the website) were also not sufficient since ‘Heitec’ was used as commercial name.

Even disregarding the lack of precise designations of the goods and services in the various items of evidence, items 4 to 7, taken together, did not sufficiently prove the use of the mark since no information on the company’s turnover by line of products or services was provided.

Once again recalling that use cannot be proven based on probabilities or presumptions, the court confirmed that items 4 to 7 were not sufficient to establish genuine use. The decision of the Board of Appeal was confirmed.

This article first appeared on WTR Daily, part of World Trademark Review, in February 2022. For further information, please go to www.worldtrademarkreview.com.