A second bite of the cherry? Introducing new evidence in appeal proceedings at the EUIPO

Briefing

Although prudent to file all relevant and available evidence at first instance proceedings at the EU Intellectual Property Office (EUIPO), a decision by the EUIPO's Board of Appeal in the McDonald's v Supermac cancellation case serves as a reminder that there are circumstances where significant new evidence can be filed during EUIPO appeal proceedings. The position is somewhat different in the UK where there is limited scope to introduce new evidence on appeal from the UK Intellectual Property Office (UKIPO).

What has happened?

In response to an opposition filed by McDonald's International Property Company Limited, Supermac's (Holdings) Ltd, a well-established Irish fast food business, applied to revoke McDonald's EUTM registration for BIG MAC on the grounds that it had not been put to genuine use in the EU for a continuous period of 5 years.

McDonald's filed limited evidence of the use of its BIG MAC trade mark in the EU at first instance. That evidence was deemed insufficient to show use and the BIG MAC registration was revoked.

McDonald's appealed the decision to the EUIPO's Board of Appeal, submitting over 700 pages of additional evidence of use at the same time, including consumer surveys, online newspaper and magazine articles, copies of receipts, menus, marketing material, adverts, and website analytics, all relating to use of the Big Mac mark. McDonald's argued that the additional evidence should be accepted at appeal as it was merely supplementing previously filed evidence.

Supermac's objected on the basis that the additional evidence constituted "a significant and substantial part of the evidence of use and was only submitted at appeal with no due cause" and that McDonald's had failed to indicate which evidence the additional evidence was allegedly supplementing.

After considering current practice, the additional evidence was admitted by the Board since it was deemed to be merely supplementing and building on previously filed evidence of use. Given the new evidence, the Board concluded that the BIG MAC registration had been put to genuine use during the relevant period, albeit not for all goods and services covered. McDonald's was successful in retaining the registration for a reduced specification in Classes 29, 30 and 42.

The decision illustrates the significant scope for parties to supplement evidence on appeal to the Board of Appeal. It seems that evidence can be deemed to be merely supplementary even if it voluminous and goes well beyond what was originally submitted.

This should be contrasted with the position where a further appeal is filed at the General Court where there is very limited scope to introduce additional evidence. It should also be contrasted with the position in the UK where the scope to introduce additional evidence on appeal from the UKIPO is considerably more limited.

Want to know more about supplementing evidence?

Generally, parties should not submit their evidence for the very first time at appeal proceedings, particularly if this evidence was known and available at first instance proceedings. This is because:

Under Article 95(2) of the EUTM Regulation, the Office (first instance) may disregard facts or evidence which are not submitted in due time by the parties concerned.

Under Article 27(4) EUTM Regulation, the Board of Appeal may accept facts or evidence submitted for the first time before it only where those facts or evidence are, on the face of it, likely to be relevant to the outcome of the case, and they have not been produced in due time for valid reasons, in particular where they are merely supplementing relevant facts and evidence which had already been submitted in due time or are filed to contest findings made or examined by the first instance of its own motion in the decision subject to appeal.

In the McDonald's case, the Board concluded that the conditions for accepting the additional evidence have been met, noting that, "In particular, the evidence in question reacts to the Cancellation Division’s findings (the assessment of the evidence of use of the contested mark). This additional evidence only supplements and builds on the evidence submitted in the proceedings before the Cancellation Division, and concerns use of the contested mark. Furthermore, it may also be relevant to the outcome of the case since it cannot be excluded that, if it had been taken into account by the Cancellation Division, it may have affected the Cancellation Division’s assessment and its final conclusions" (see paragraph 29).

Furthermore, the Board noted that Supermac's had had a chance to examine McDonald's new evidence and to submit its comments.

This decision is not novel but confirms numerous earlier decisions that have allowed new evidence at appeal. From these cases, we can obtain a list of criteria and circumstances where evidence may be admitted or denied on appeal.

Factors in favour of the admissibility of evidence in appeal proceedings:

If this evidence is likely to be relevant for the outcome of the case.

If the evidence has not been produced in due time for a valid reason, which may be understood as including one of the following situations:

the evidence is merely supplementing relevant evidence that has already been submitted in due time
the evidence is filed to contest findings made or examined by the first instance tribunal of its own motion in the decision subject to appeal
the evidence has recently come to light or was not otherwise previously available.

Factors against the admissibility of evidence in appeal proceedings: