Earlier decisions recognising the reputation of a mark cannot be disregarded by EUIPO

C-564/16 P

EUIPO v Puma

Trade marks: Scope of protection

Procedural law: Obligation to state reasons

28 Jun 2018

The matter at hand

The German company Puma lodged an opposition against a sign, depicting a big cat in pounce stance, applied for by the Italian company Gemma Group for machines for processing of wood, aluminium and for treatment of PVC. Puma invoked the reputation (Article 8(5) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark) of its earlier PUMA figurative international marks, registered for inter alia bags, clothes, shoes, games and toys.

Both EUIPO’s Opposition Division and the Board of Appeal rejected Puma’s opposition. Specifically, EUIPO examined and rejected the evidence of the reputation of the earlier marks considering that the opposition would have to fail in any case because the other conditions (namely the existence of an unfair advantage taken of the distinctive character or the repute of the earlier marks or of detriment to their distinctive character or repute) had not been satisfied.

Puma brought an action for the annulment of EUIPO’s decision before the General Court. The General Court annulled the decision because it did not comply with the principle of good administration and the obligation to state reasons. The General Court considered that the reputation of the PUMA marks had been established by the EUIPO in three previous decisions (which decisions were confirmed by a number of national decisions and by a judgment of the General Court). The earlier decisions were not examined or even mentioned in the contested decision: the Board of Appeal merely stated that EUIPO was not bound by its previous decisions. The General Court ruled that the Board of Appeal, in those circumstances, should have either requested that Puma submit supplementary evidence on the reputation of the earlier marks or provided the reasons why it took the view that the previous decisions had to be disregarded in the present case. According to the General Court, that was particularly necessary because some of those decisions referred in a very detailed manner to the evidence on which the assessment of the reputation of the earlier marks in those decisions was based, which should have drawn the Board of Appeal’s attention to the existence of that evidence.

EUIPO appealed against the decision of the General Court.

The judgment of the ECJ

The ECJ recalls that, having regard to the principles of equal treatment and sound administration,  EUIPO “must take into account the decisions previously taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, since the way in which those principles are applied, must be consistent with respect for the principle of legality, which means that the examination of any trade mark application must be stringent and full, and must be undertaken in each individual case” (paragraphs 60 and 61). The ECJ emphasizes that this rule also applies to opposition proceedings based on a relative ground for refusal (paragraph 63).

In circumstances where an opponent relies on earlier EUIPO decisions on the reputation of the invoked earlier mark in a precise manner, it is according to the ECJ “incumbent on the competent EUIPO bodies to take into account the decisions which they have already adopted and to consider with especial care whether it should decide in the same way or not”. “Where those bodies decide to take a different view from the one adopted in those previous decisions, they should, having regard to the context in which they adopt their new decision, since reliance on those previous decisions forms part of that text, provide an explicit statement of their reasoning for departing from those decisions” (paragraph 66).

According to the ECJ, the General Court correctly held that the Board of Appeal had disregarded the principle of sound administration, in particular the obligation to state reasons for its decisions, and thus rendered the decision at issue unlawful (paragraph 85).

Also, the ECJ agrees with the General Court’s consideration that if the Board of Appeal could not satisfy its obligation to state reasons without having the evidence which had been lodged in the earlier proceedings before EUIPO (Puma merely referred to the earlier decisions without actually filing the underlying evidence), “it would have been necessary for the Board to exercise its power to request the production of that evidence for the purposes of exercising its discretion and carrying out a full examination of the opposition” (paragraph 97). Such an obligation pursuant to the principle of sound administration, cannot be regarded as running counter to the provisions of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark (paragraph 99).

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