Late-filed evidence: sofa, so good ...

The December 2009 issue of OHIM's Alicante News carries a little feature entitled "New evidence in design invalidity proceedings". It reads as follows:

"In a recent decision [15 June 2009 -- more than half a year ago, which is a long time ago in trade mark law but pretty recent if measured in Design Years] concerning a declaration of invalidity of the registered Community design (RCD) No. 456140-0001 the Third Board of Appeal gave a detailed explanation of how to deal with evidence which was not introduced in the first stage of the invalidity proceedings before the Invalidity Division but came up later in the appeal.

The case involved a dispute between two manufacturers of furniture about the novelty of a sofa design called “Eva” allegedly launched on the market before the date of filing of the contested RCD. In this case, the Board of Appeal decided that while it was not obliged to consider evidence submitted late, it could do so if reasonable notice had been given to the parties involved and if, on the face of it, the evidence was likely to be relevant to the outcome of the invalidity case. Since the decision is in Danish, the relevant paragraphs 25 through 30 are cited literally in the following:

25 During the invalidity proceedings and within the set time-limit the appellant argued that the contested RCD lacked novelty and individual character and that it should be refused under Article 25(1)(b) CDR. During the appeal proceedings, i.e. together with the statement of grounds, the appellant submitted some new evidence in support of its previous assertion that an identical design has been made available to the public prior to the date of filing of the RCD and/or that the overall impression that the contested design produces on the informed user does not differ from the overall impression produced on such a user by a prior design which has been made available to the public.

26 In accordance with Article 63(2) CDR the Office may disregard facts or evidence which are not submitted in due time by the parties concerned. However, the Office is not prohibited from taking into account facts and evidence which are submitted or produced late.

27 The Board considers that, in the case at hand, the further evidence is admissible for the following reasons. Firstly, the new evidence was regularly notified to the respondent. The respondent did not, at least explicitly, dispute the possibility to file further evidence. On the contrary, it agreed to the suspension of the proceedings so that the further evidence could be submitted [This suggests that best practice is to make sure a respondent gets to hear of the out-of-time evidence as early as possible; if it doesn't have time to dispute the admissibility of the further evidence, you can't argue that it has been implicitly or explicitly accepted].

28 Secondly, there is no time limit for bringing an invalidity action before the Office and therefore taking into account facts and evidence submitted late by the appellant, could contribute to ensuring that a RCD whose use could later successfully be challenged by means of further invalidity proceedings does not stay on the register [True, but unlikely to appeal to a typical SME which may be reluctant to go through the whole thing again].

29 The Board also finds it appropriate to admit at this stage the new evidence since it is supplementing evidence to the evidence already provided by the appellant during the invalidity proceedings especially concerning the sofa model ‘Eva', and seems, prima facie, to support the appellants previous assertion that an identical design has been made available to the public prior to the date of filing of the RCD and/or that the overall impression that the contested design produces on the informed user does not differ from the overall impression produced on such a user by a prior design which has been made available to the public. This evidence might prove the appellant's assertion and it is, on the face of it, likely to be relevant to the outcome of the invalidity case it has filed. The Board stresses that a prima facie relevance of the evidence does not imply that it is conclusive to the outcome of the present case [Well, that's a relief!].

30 With a view to the above, the Board deems it appropriate to admit the additional evidence filed with the statement of the grounds of the appeal, by exercising its discretionary power, under Article 63(2) CDR".

The decision in question is R 1713/2007-3.