Fishbone vs. Fishbone (Beachwear): Court of Justice of the European Union (CJEU) decides on admissibility of further documents to prove genuine use in opposition proceedings


The CJEU dismissed an appeal brought by New Yorker SHK Jeans GmbH & Co. KG against OHIM on basis of the alleged late filing of documents to prove the genuine use of a trade mark in opposition proceedings. The CJEU decided that OHIM was entitled to take into account additional documents if they serve to complete the documents provided originally (Case C-621/11).

The CTM application of New Yorker Jeans for the word mark Fishbone for classes 18 (leather goods) and 25 (clothing, footwear, headgear) was opposed on basis of an earlier Greek figurative mark FISHBONE Beachwear registered for t-shirts and beachwear in class 25. During the proceedings New Yorker Jeans requested proof of use of the earlier Greek mark. The opponent submitted a first set of documents which included affidavits, receipts and several photographs. After New Yorker Jeans claimed these documents would not demonstrate genuine use of the opposition trade mark the opponent handed over catalogues as further documents.

OHIM considered both sets of documents and rejected New Yorker Jeans’ application. New Yorker Jeans then appealed against the decision and claimed that the second set of documents should not have been considered as OHIM is required to reject an opposition where no or only irrelevant proof of use is filed. The appeal was denied by the Board of Appeal and also by the General Court. Both took the view OHIM had the right to take into account the further documents.

On appeal, the CJEU held that OHIM could take account of the further documents submitted by the opponent. OHIM was only precluded from taking into account further documents where no proof of use had been filed within the original deadline or where the proof delivered within the deadline appeared irrelevant to demonstrate genuine use. In those cases, OHIM would be bound to reject the application. In cases where no sufficient proof was delivered within the original deadline, OHIM may take into account further documents as long as those further documents serve as an addition to the evidence already provided.

The Fishbone decision follows recent decisions dealing with late submissions but more importantly clarifies findings of the CJEU in OHIM v KAUL (Case C-29/05) that (1) it was within OHIM’s discretion to take into account evidence filed late and (2) it will be likely that OHIM considers such evidence if the further materials are relevant for the outcome of the case and the stage of the proceedings as well as the surrounding circumstances do not militate against it.

Grübler-Dr Ulrike
Dr. Ulrike Grübler

This article is part of the BrandWrites Newsletter for November 2013