A recent case before the CJEU (EUIPO v Puma; C-564/16) has confirmed that previous decisions of the EUIPO (and corroborating decisions at a national level in EU Member States) must be examined and taken into account if filed as evidence of the reputation of an earlier trade mark in opposition proceedings.

 

The applicant, Gemma Group Srl applied to register the figurative sign shown below for goods and services in Class 7 corresponding to machines for processing of wood, machines for processing aluminium and machines for treatment of PVC:

 

 

 

 

Puma opposed the registration on the basis of the earlier international figurative trade registrations shown below for goods and services in Classes 18 (Bags etc), 25 (Clothing etc) and 28 (Games, toys etc):

 

 

 

 

The Opposition Division rejected Puma’s opposition. It took the view that it was not necessary, for reasons of procedural economy, to examine previous decisions of the EUIPO and the national courts, and concluded that the relevant public would not establish a link between the marks due to the differences between the goods covered by each of those marks. The Board of Appeal upheld that decision.

 

However, the GC annulled the Board of Appeal’s decision, and ruled that the Board had infringed the principle of sound administration, in particular the EUIPO’s obligation to state the reasons on which its decisions are based, and that the Board had also failed to carry out a full examination of the reputation of the Puma’s earlier marks by failing to take into account previous decisions on the same issue. The EUIPO appealed to the CJEU.

 

Puma had put forward three previous decisions in its written pleadings before the Opposition Division. As the CJEU observed: “nothing precluded earlier EUIPO decisions determining the existence of reputation in other inter partes proceedings from being relied on in that context as evidence in support of the reputation of that earlier mark, in particular where they are identified in a precise manner and their substantive content is set out in the notice of opposition in the language of the case, which was what occurred in the present case”.

 

The CJEU concluded that the GC had not disregarded the principle of sound administration and had not erred in law by finding that, in the circumstances of the present case, it was incumbent on the Board of Appeal (in accordance with the principle of sound administration) to either provide the reasons why it considered that the findings made by EUIPO in the three previous decisions relating to the reputation of the earlier marks had to be disregarded in the present case, or request that Puma submit supplementary evidence of the reputation of the earlier marks. Accordingly, the EUIPO’s appeal was dismissed.

 

This decision is of practical importance for trade mark proprietor(s) who give notice of opposition based on Article 8(5) of the EUTMR, as the CJEU has held that trade mark owners can now rely on previous decisions of the EUIPO that do not involve the same parties (and corroborating national decisions) as evidence that the reputation of their trade mark has already been established. If the EUIPO has already found that a particular trade mark has a reputation for the purposes of Article 8(5), then that finding must be regarded as a finding of fact, and the evidence accepted by the EUIPO as the basis of that finding must, in principle, appear in the statement of reasons on which the previous decision is based. Since the previous EUIPO decision relies on the evidence in support of its finding, re-filing such evidence is no longer crucial in the context of subsequent opposition proceedings: the previous decision is sufficient in itself.

 

Contrary to EUIPO’s argument in the present case, taking account of previous EUIPO decisions in such a context does not pose any conflict with the adversarial nature of the opposition proceedings, and does not prevent a unique finding being made in the particular opposition proceedings in question. However, trade mark owners should not rely on past decisions as the sole means of evidence; as the CJEU stated, “even where, as in the present case, the opponent relies on marks which have been recognised previously as having a reputation by EUIPO, it is still required to challenge the applications to register subsequent marks on a case-by-case basis by establishing in each case the reputation of the marks which it relies on. The reputation of an earlier mark depends, not only on the evidence presented by the proprietor of that mark, but also on the counter-arguments presented by the other party to the proceedings.”