Judgment of the Court (Fourth Chamber) of 29 July 2010.

Arguments of the parties

48 By its first plea, Anheuser-Busch maintains that the General Court’s interpretation, in paragraphs 78 and 79 of the judgment under appeal, of Article 42(3) of Regulation No 40/94 is wrong in law.

49 In its view, that interpretation stands in stark contrast to previous case-law of the General Court and to the consistent practice of OHIM over many years, more specifically until the codification of that case-law and practice in Rule 19 of the implementing regulation (2005).

50 In fact it is apparent from Case T-318/03 Atomic Austria v OHIM - Fabricas Agrupadas de Muñecas de Onil (ATOMIC BLITZ) [2005] ECR II-1319 and Case T-191/04 MIP Metro v OHIM - Tesco Stores (METRO) [2006] ECR II-2855 that the General Court, like OHIM, took the view that, where requested to submit all facts, evidence and arguments in support of its case, the opponent had to act upon that within the time-limit set by OHIM, and that this obligation extended to submitting evidence of the renewal of the earlier mark where it had in the meantime been renewed, in so far as proof of that could not be seen from any documents submitted with the notice of opposition.

51 The consistent practice of OHIM to require a timely submission of evidence of renewal resulted in an amendment of OHIM’s Guidelines and in codification in Rule 19(2)(a)(ii) of the implementing regulation (2005).

52 In those circumstances, by denying the obligation, on the part of Budvar, to submit the certificate of renewal of trade mark R 238 203 as at the date by which the facts, evidence and arguments in support of the opposition had to be filed, namely 26 February 2002, the General Court reached the wrong conclusion that the Board of Appeal was at liberty not to assess whether the later submission of that certificate, namely on 21 January 2004, was to be taken into account.

53 OHIM responds that the findings of the General Court are well founded in law since, although under Rules 16 and 20 of the implementing regulation (1995) OHIM or a party to opposition proceedings was entitled to require proof of the renewal of an earlier right whose term was to expire in the course of the proceedings, that did not mean – as is confirmed, moreover, by the case-law of the General Court cited by Anheuser-Busch – that the earlier right holder had the obligation to provide the renewal certificate on its own initiative.

54 OHIM also points out that the time-limit initially set by the Opposition Division for the submission of evidence in support of the opposition filed on 28 September 1999 was 24 June 2000 and that trade mark R 238 203 did not have to be renewed until 5 December 2000 at the latest. No provision of the implementing regulation (1995) required proof of a future event, in the present case proof of the aforementioned renewal. Although the time-limit initially set was subsequently extended until 26 February 2002, the Opposition Division did not explicitly require proof of renewal to be provided within that time-limit.

55 Budvar points out that its notice of opposition contained annexes including detailed substantiation of its case and a number of evidential documents, including the certificate of registration of trade mark R 238 203 establishing the validity of that mark at the time the notice of opposition was filed. Budvar thus fulfilled its obligation to ‘file facts, evidence and arguments in support of the opposition’ and was not required to submit, after the date the notice of opposition was filed, the certificate of renewal.

Findings of the Court

56 By its first plea, Anheuser-Busch claims in essence that, contrary to what was held by the General Court in paragraph 79 of the judgment under appeal, it is clear from a reading of Article 42(3) of Regulation No 40/94 in conjunction with Rules 16(1) and (3) and 20(2) of the implementing regulation (1995) that an opponent must provide, on its own initiative, within the period fixed by OHIM pursuant to Article 42(3) of Regulation No 40/94, evidence of renewal of its earlier mark, relied on under Article 8(1) of Regulation No 40/94, with the other facts, evidence and arguments submitted in support of its opposition, where such renewal occurs after the date on which notice of opposition is filed but before expiry of the period fixed by OHIM.

57 In that regard, it must be stated that, as the General Court held, neither Article 42(3) of Regulation No 40/94 nor Rules 16(1) and (3) and 20(2) of the implementing regulation (1995) specify the facts, evidence and arguments which must be submitted in support of the opposition within the period fixed under Article 42(3) of Regulation No 40/94.

58 In particular, those provisions contain nothing to suggest that an opponent should automatically provide, within the period fixed by OHIM, evidence of renewal of the earlier mark relied on where the renewal is to occur after notice of opposition has been filed.

59 Furthermore and in any event, contrary to Anheuser-Busch’s submission, such an interpretation does not follow either from the case-law of the General Court, in particular Atomic Austria v OHIM – Fabricas Agrupadas de Muñecas de Onil (ATOMIC BLITZ) and MIP Metro v OHIM – Tesco Stores (METRO), or from any consistent practice of OHIM prior to adoption of the implementing regulation (2005).

60 In the disputes giving rise to those two judgments of the General Court, OHIM had explicitly requested that the opponent produce evidence of renewal of the earlier marks within the period set under Article 42(3) of Regulation No 40/94 where that renewal was to take place before that period expired. In those two cases, the question was not, therefore, whether the opponent was required to produce such evidence on its own initiative. That question does, however, arise in these proceedings, since it is common ground that, in this instance, OHIM did not expressly request the opponent to provide such evidence.

61 Furthermore, in Atomic Austria v OHIM – Fabricas Agrupadas de Muñecas de Onil (ATOMIC BLITZ), the General Court held that, even where there was a specific request for production of evidence of renewal of the earlier trade mark under Article 42(3) of Regulation No 40/94, OHIM could not reject the opposition because such evidence had not been produced.

62 In paragraph 40 of Atomic Austria v OHIM – Fabricas Agrupadas de Muñecas de Onil (ATOMIC BLITZ), the General Court in fact held that an opponent is free to choose the evidence he considers useful to submit to OHIM in support of his opposition and that OHIM is obliged to examine all the evidence submitted in order to determine whether it does prove that the earlier mark was registered or filed, and cannot reject out of hand a particular type of evidence on the basis of the form it takes. Further, in paragraph 46 of that judgment, the General Court considered that it was possible to determine from extracts from the trade mark register accompanying the notice of opposition the date on which protection for the earlier marks ended, and that it was possible to conclude that four of the five earlier marks were valid at the time of the Board of Appeal’s decision.

63 In paragraph 46 of MIP Metro v OHIM – Tesco Stores (METRO), the General Court held that, where the opponent had not produced evidence of renewal of the earlier mark, requested by OHIM under Article 42(3) of Regulation No 40/94, OHIM had made two errors of law in holding, first, that the fact that the term of protection of the earlier mark expired before the Opposition Division gave a decision on the opposition could not be taken into account by the latter and, second, that the Opposition Division does not have the power to request information on the renewal of the earlier mark after the initial evidence has been filed.

64 Contrary to Anheuser-Busch’s submission and in any event, nor is it apparent that, prior to adoption of the implementing regulation (2005), a consistent practice had developed at OHIM whereby an opponent was required to furnish, automatically, evidence of renewal of the earlier mark with the other facts, evidence and arguments to be submitted in support of the opposition within the period fixed by OHIM to that end under Article 42(3) of Regulation No 40/94.

65 In that connection, it must be noted that, in the decision of the Second Board of Appeal of OHIM of 9 July 2003 at issue in the dispute in Atomic Austria v OHIM – Fabricas Agrupadas de Muñecas de Onil (ATOMIC BLITZ), the Board had rejected the opposition because evidence of renewal of the earlier marks had not been produced within the period fixed, pointing out that such evidence had been clearly and unequivocally requested in a note attached to a letter from OHIM to the opponent under Article 42(3) of Regulation No 40/94.

66 Conversely, in the decision of the First Board of Appeal of OHIM of 23 May 2004 at issue in the dispute in MIP Metro v OHIM – Tesco Stores (METRO), the Board upheld an appeal against the Opposition Division’s decision rejecting the opposition on the ground that, although it had been requested to produce evidence of renewal of the earlier mark, the opponent had failed to provide that evidence. The Board of Appeal held that, on the date on which notice of opposition was filed and even on the date on which the evidence was requested, the earlier right was still in force and, accordingly, the opponent did not have to prove that registration of its trade mark had been renewed.

67 It thus also follows that, contrary to Anheuser-Busch’s submission, nor is it apparent that the provisions of Rule 19(2) and (4) of the implementing regulation (2005) may be taken into account in this instance on the ground that they represent no more than a codification of the interpretation developed by the General Court, on the basis of OHIM’s consistent practice, of Article 42(3) of Regulation No 40/94 and Rules 16(1) and (3) and 20(2) of the implementing regulation (1995).

68 In any event, while the abovementioned provisions of the implementing regulation (2005) now impose, within certain limits, an express obligation on an opponent to produce proof of renewal of the earlier trade mark within the period referred to in Article 42(3) of Regulation No 40/94, they thereby clarify the general rule laid down by Article 42(3) of the regulation, which is intended to afford greater legal certainty to operators engaged in opposition proceedings before OHIM. In those circumstances, as the General Court correctly held in paragraph 76 of the judgment under appeal, the new rules laid down in the implementing regulation (2005) cannot be applied with retroactive effect in the present case.

69 It must therefore be concluded that the General Court did not err in law when it held, in paragraph 79 of the judgment under appeal, referring moreover to paragraph 41 of MIP Metro v OHIM – Tesco Stores (METRO), that it results from a reading of Rule 16 in conjunction with Rule 20 of the implementing regulation (1995), first, that OHIM is entitled to require proof that an earlier mark has been renewed where that mark expires after the notice of opposition has been filed and, second, that those provisions do not require an opposing party, on its own initiative, to submit such proof.

70 It should be added, as the General Court stated in paragraphs 41 and 46 of MIP Metro v OHIM – Tesco Stores (METRO), that the power thus conferred on OHIM to require proof that an earlier mark has been renewed can also be founded on Article 76 of Regulation No 40/94.

71 Accordingly, the first plea on appeal must be rejected as unfounded.

Arguments of the parties

72 By its second plea, Anheuser-Busch criticises the General Court for having held that the Board of Appeal could take into account the certificate of renewal without having to exercise the discretion conferred on it by Article 74(2) of Regulation No 40/94 and recognised in Case C-29/05 P OHIM v Kaul [2007] ECR I-2213, paragraph 43.

73 In holding that the certificate of renewal had been submitted in due time and that Article 74(2) of Regulation No 40/94 did not apply, the General Court infringed not only the procedural provisions concerning the timely submission of evidence in opposition proceedings before OHIM (a complaint addressed in the first plea), but also Article 74(2) itself.

74 OHIM contends that, since Budvar was not subject to a specific time-limit for submitting evidence of renewal of trade mark R 238 203, Article 74(2) of Regulation N0 40/94 was not applicable to the facts of the case and the Board of Appeal therefore did not have to exercise the discretion provided for therein.

75 Budvar maintains that, since the opponent was under no obligation to file the certificate of renewal within any period of time, there was no ‘belated submission’ in the present case. Before issuing its decision on opposition, OHIM should consider of its own motion whether the rights invoked in support of the opposition are valid rights. It is therefore not important when the opponent submitted the certificate of renewal of its earlier mark or whether it has actually submitted it.

Findings of the Court

76 By its second plea, Anheuser-Busch complains that the General Court erred in law in holding, in paragraph 71 of the judgment under appeal, that no infringement of Article 74(2) of Regulation No 40/94 could be found against the contested decision in connection with the taking into account of the certificate of renewal.

77 Since, in Anheuser-Busch’s view, the certificate was not submitted within the period fixed by OHIM under Article 42(3) of Regulation 40/94, it amounts to evidence which was not submitted in due time for the purposes of Article 74(2) of the regulation. As a consequence, OHIM – in Anheuser-Busch’s submission – could disregard the certificate only by exercising its discretion to exclude evidence submitted out of time, which is conferred on it by Article 74(2). However, in the present case OHIM did not exercise that discretion since it wrongly believed that the evidence had been submitted in due time.

78 In that regard, it should be observed that it is apparent from paragraph 69 of this judgment that the General Court did not err in law when it held that, in this instance, the opponent was not required to submit proof of renewal of trade mark R 238 203 within the period fixed pursuant to Article 42(3) of Regulation No 40/94.

79 Since the certificate of renewal had been submitted in due time, the General Court correctly held that there was no need for OHIM to exercise the discretion conferred on it by Article 74(2) of Regulation No 40/94 in order to take that evidence into account.

80 Accordingly, the second plea on appeal must be rejected as unfounded.

Arguments of the parties

81 By its third plea, Anheuser-Busch claims that the General Court infringed Article 43(2) and (3) of Regulation No 40/94, by holding that the evidence of use of trade mark R 238 203 submitted by Budvar in support of its opposition was sufficient.

82 The evidence of use submitted by Budvar almost exclusively showed use of another trade mark, namely trade mark 674 530, comprising, in stylised script, the words ‘Budweiser Budvar’. This mark was not, however, taken into account by the Board of Appeal or the General Court since it is not an earlier right in relation to the trade mark for which registration is sought.

83 It is apparent, however, from paragraphs 81 to 86 of Case C-234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I-7333, that evidence of use of one registered trade mark cannot at the same time be evidence of use of another registered trade mark. The General Court should have examined the applicability of that rule in the present case.

84 Anheuser-Busch argues that the General Court should have carried out that examination since it had submitted that the documents presented by Budvar as evidence of use did not comply with Article 43(2) and (3) of Regulation No 40/94, and since it had challenged the evidence inasmuch as it referred, in particular, to the nature of the use made of the trade mark, meaning the way the mark appeared on the products themselves.

85 The General Court was therefore incorrect in stating, in paragraph 112 of the judgment under appeal, that Anheuser-Busch had not disputed the fact that the documents in question related to the use of trade mark R 238 203.

86 OHIM maintains, first of all, that the third plea is inadmissible in two respects.

87 First, it is a new plea altering the subject-matter of the dispute as it stood before the General Court, although the introduction of a new plea of that kind is prohibited under Articles 113(2) and 116(2) of the Rules of Procedure of the Court of Justice, the review carried out by that Court being limited to the findings made by the General Court in reply to the pleas that were raised before it.

88 That is all the more so given that the judgment of the General Court which gave rise to the appeal in Il Ponte Finanziaria v OHIM had already been delivered when Anheuser-Busch’s application was lodged at the General Court, so there was no reason why the appellant could not have raised a plea to this effect in that application.

89 Second, it is apparent from the judgment under appeal that the General Court took care to mention that the evidence submitted by Budvar reflects use of the word ‘Budweiser’‘in different forms’. On the other hand, at no point did the General Court suggest that use of trade mark R 238 203 was demonstrated on the basis of evidence of use of trade mark 674 530. Had it done so, the General Court would indeed have made a statement regarding the application to the facts of the case of Article 15(2)(a) of Regulation No 40/94.

90 The conclusion drawn by the General Court from the evidence submitted by Budvar, namely that it confirmed the genuine use of trade mark R 238 203, including in the form of a word, is a finding of fact that cannot be reviewed by the Court of Justice.

91 Next, even if this plea were admissible, OHIM maintains that it is in any case unfounded since it is based on a distortion of the facts.

92 Finally, the principle laid down by the Court of Justice in Il Ponte Finanziaria v OHIM cannot apply in the present case because the factual circumstances in this case preclude any analogy. This principle applies only if two different trade marks are validly relied on by the opponent and both are subject to the use requirement. Only in such a case does the risk arise that proof of use relating to one trade mark may be used to circumvent the dismissal of the other trade mark for the purpose of the opposition.

93 That is not the case here, however, because trade mark 674 530, comprising, in stylised script, the words ‘Budweiser Budvar’, cannot be relied on in opposition proceedings since it does not constitute an earlier right.

94 Budvar maintains that both OHIM and the General Court concluded that the evidence submitted by it clearly demonstrated the nature of the use of the trade mark, namely for beer.

95 Budvar points out that it submitted documents proving the use of trade mark R 238 203 because at least that mark appears on the relevant products, namely beer, which are advertised by the documents submitted by it. Those facts were clearly taken into account in paragraphs 110 to 115 of the judgment under appeal.

96 Finally, in the present case, reference cannot be made to Il Ponte Finanziaria v OHIM since that judgment dealt with the issue of whether evidence of use of one trade mark can be evidence of use of another trade mark, whereas, in the present case, evidence of genuine use of trade mark R 238 203 was definitely provided by the opponent by means of the submission of several documents proving the use of the word ‘Budweiser’ in connection with beers.

Findings of the Court

97 By its third plea, Anheuser-Busch in essence complains that the General Court did not annul the contested decision on the ground that, in view of the conditions laid down in Article 43(2) and (3) of Regulation No 40/94, the documents submitted by Budvar were not sufficient to prove genuine use of trade mark R 238 203.

98 The judgment under appeal is, it claims, vitiated in that respect by an error of law since the documents concerned essentially prove use of another trade mark, namely trade mark 674 530, which was not, however, taken into account by the Board of Appeal as it is not an earlier mark within the meaning of Article 8(1) of Regulation No 40/94. It is apparent from Il Ponte Finanziaria v OHIM, and in particular from paragraph 86 thereof, that proof of use of one registered mark cannot at the same time constitute proof of use of another registered mark on the ground that the latter mark is merely a slight variation on the former.

99 However, as OHIM correctly maintains, Anheuser-Busch is raising a plea which was not included in the action brought before the General Court against the contested decision.

100 It is therefore a new plea which extends the subject-matter of the dispute and which for that reason cannot be put forward for the first time at the appeal stage (see, in particular, Case C-16/06 P Les Éditions Albert René v OHIM [2008] ECR I-10053, paragraph 125).

101 Indeed, in paragraphs 110 and 112 of the judgment under appeal, the General Court noted that Anheuser-Busch had not disputed the fact that the documents in question related to the use of trade mark R 238 203. In paragraph 114 of the judgment under appeal, the General Court mentioned that Anheuser-Busch maintained before it that the Board of Appeal should have taken other factors into account, such as the nature of the use of that mark in Germany and Austria.

102 It is thus apparent that the General Court concluded that the subject-matter of the dispute before it concerned solely the question whether the documents in question were sufficient to prove genuine use of trade mark R 238 203, in particular with regard to the nature of the use of that mark, and did not concern the question whether those documents concerned use of that trade mark or use of another trade mark, also relied on by the opponent but excluded by OHIM during the opposition proceedings.

103 Accordingly, the General Court confined itself, in paragraph 114 of the judgment under appeal, to addressing the arguments raised before it concerning the first question and did not deal with the second question which, moreover, was not the subject of argument before it.

104 Before the Court of Justice, Anheuser-Busch asserts, however, that its application to the General Court, in particular its third plea, covers that second question.

105 However, it is clear from the actual wording of paragraphs 110, 112 and 114 of the judgment under appeal that the General Court in no way misconstrued the scope of that plea.

106 Furthermore, the argument that the evidence provided by Budvar concerned use of a trade mark other than the only mark to be considered by the Board of Appeal is not sufficiently connected with the third plea raised before the General Court – which alleged that that evidence failed to satisfy the conditions necessary for the earlier mark at issue to be regarded as having been put to genuine use – and, consequently, that argument cannot be regarded as merely expanding the third plea.

107 That argument in fact concerns paragraphs 81 to 86 of Il Ponte Finanziaria v OHIM, which relate to a plea based on Article 15(2)(a) of Regulation No 40/94, whilst the third plea raised by Anheuser-Busch before the General Court was based on Article 43(2) and (3) of that regulation.

108 In any event, that argument has a different purpose from the third plea in the action before the General Court, since it does not seek to dispute that the earlier trade mark was actually put to commercial use but addresses the question whether evidence relates to one trade mark rather than another.

109 The third plea on appeal must therefore be rejected as inadmissible.

110 It follows from the foregoing that none of the three pleas in law raised by Anheuser-Busch in support of its appeal can be accepted and that the appeal must therefore be dismissed in its entirety.