A new view of You View? No shilly-shallying over discretion, rules General Court

Coming to the rescue, the General Court of the European Union gave its decision today in Case T‑480/13, You-View.tv v Office for Harmonisation in the Internal Market (OHIM), YouView TV Ltd , another sad saga in YouView TV's recent litigation history [on which see earlier Katpost here].

In September 2011 British company YouView TV applied to register the word sign YouView+ as a Community trade mark (CTM) for various goods and services in Classes 9, 16, 38, 41 and 42. Belgian business You-View.tv opposed, relying on its earlier Benelux figurative trade mark (shown on the right) which had been registered in 2008 for services in Classes 35, 38 and 41. Unsurprisingly the ground of opposition was an alleged likelihood of confusion on account of the similarity of the marks and the goods and services of the respective parties.

By notification of 30 April 2012, OHIM set the time-limit for substantiating the earlier rights on which the opposition was fixed as 5 September 2012. The explanatory note attached to that notification explained that, as regards an earlier trade mark registration, the registration certificate or equivalent official document had to show all the formal and substantive particulars, including the opponent's ownership. The notification added that OHIM would not tell the opponent whether the required evidence was missing and that the opposition would be rejected without examination of the merits if the evidence was not filed within the prescribed period. You-View.tv accordingly filed an extract from the Benelux Trade Mark Office and an English translation. This showed that not You-View.tv but You-View.tv BVBA was the holder of the earlier mark; no explanation was given for this discrepancy.

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In September 2012 the Opposition Division rejected the opposition in its entirety and ordered You-View.tv to pay costs. The notice of opposition was filed in the name of You-View.tv while the opposition was based on an earlier Benelux mark registered in the name of You-View.tv BVBA, these being two different legal entities. What's more,You-View.tv failed to provide any evidence of a transfer of ownership of the earlier mark to its name, nor did it file any document to show that it had been authorised by the proprietor of the earlier mark to file an opposition. Accordingly, under Rule 20(1) in conjunction with Rule 19 of the CTM Implementing Regulation 2868/95 [Rule 20: "(1) If the application is not withdrawn or restricted ..., the applicant shall file his observations within the period specified by the Office ..."], the opposition should be rejected as unfounded since the opponent had failed to prove its entitlement to file the opposition.

You-View.tv appealed to the Board of Appeal, filing evidence intended to establish its ownership of the earlier mark and explaining that it had become a public limited company in March 2010, a fact that had not been notified to the Benelux Trade Mark Office. The Fourth Board of Appeal, quite unmoved, dismissed the appeal, adding:

‘17 The facts and evidence submitted for the first time by [You-View.tv] during the appeal proceedings in order to prove that it is the owner of the earlier mark must be disregarded. According to the case-law of the European Courts, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time-limits to which such submission is subject under the provisions of [Regulation 2868/95]. The possibility to submit facts and evidence after the expiry of the periods specified is therefore conditional upon there being no provision to the contrary. It is only if that condition is met that [OHIM] has the discretion, attributed to it by the Court of Justice ..., as regards the taking into account of facts and evidence submitted out of time …

18 Such an express provision to the contrary exists in the case at hand, namely Rule 20(1) [of Regulation No 2868/95] in conjunction with Rule 19 [of Regulation No 2868/95]. Pursuant to these provisions, in the absence of proof of the existence, validity and scope of protection of the earlier mark, as well as the opponent’s entitlement to file the opposition, the rejection of the opposition is mandatory (“shall” be rejected), and not merely an option for [OHIM].

19 In sum, the opponent’s non-compliance with Rule 19(2) [of Regulation No 2868/95] cannot be made good by the late submission of documents before the Board.’

No doubt marvelling at the faithful application by the Board of Appeal of the canons of literal interpretation for which English judges in days gone by were justly criticised, You-View.tv applied to the General Court to have this unhelpfully legalistic and potentially commercially bewildering ruling set aside.

This morning the General Court annulled the decision of the Fourth Board of Appeal, this time ordering OHIM to pay the costs. In its view:

* It followed from the wording of Article 74(2) of Regulation 40/94 [now Article 76(2) of Community Trade Mark Regulation 207/2009: "The Office may disregard facts or evidence which are not submitted in due time by the parties concerned"], that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time-limits to which such submission is subject.  OHIM is thus in no way prohibited from taking account of facts and evidence which are submitted or produced late.

* In this case the Board of Appeal considered that it had no discretion to take account of You-View.tv's evidence in support of its ownership of the earlier mark. However, in failing to exercise its discretion, the Board of Appeal infringed Article 76(2) of Regulation 207/2009.

This Kat is relieved at the decision since, if it had not stood, the effect would have been either to allow two marks containing the words "you view" to be registered and theoretically used at the same time in the three countries covered by the Benelux mark but also because, if You-View.tv could not swiftly and easily raise its Benelux rights in support of its commercial activities, it might then consume funds and effort in seeking other legal means, such as unfair competition law, in order to do so.

Merpel wonders why the words "you view" in relation to things that you view seem to be such a magnet for trade mark registrants: isn't it better to try to register marks that are non-descriptive in preference to those that are nondescript? She also wonders how this business about discretion and the word "shall" comes out in other official languages of the European Union, especially those which are official languages of OHIM itself and therefore de facto more influential in terms of developing Community trade mark law.

Meaning of "shall" here
"Shall" or "will"? Here
Shillyshally here