EUIPO raises battle-axe against Puma before Luxembourg bench

This case first dates back to November 2013 when Gemma Group, an Italian company specializing in design, production and distribution of machines for processing aluminium, steel and wood, filed an application with the EUIPO to register this figurative sign:
The application was for goods and services in Class 7 (Machines for processing of wood, Machines for processing aluminium, Machines for treatment of PVC) of the Nice Agreement.
The application was published in April 2013 and was opposed by Puma under what is now Article 46 of Regulation 2017/1001 (EU Trade Mark Regulation (EUTMR).  
Based on Article 8(1)(b) EUTMR, Puma claimed that the applicant’s sign conflicted with its earlier international figurative trade registrations for goods and services in Classes 18 (Bags to wear over the shoulder and travel bags, trunks and suitcases, especially for sportswear), 25 (Clothing, boots, shoes and slippers), and 28  (Games, toys, equipment for physical exercise, equipment for gymnastics and sports including sports balls) of the Nice Classification:
 and 

The earlier stages
The EUIPO Opposition Division rejected the opposition in its entirety, and the Fourth Board of Appeal upheld the decision. Following an appeal to the General Court (GC), this ruled that the Fourth Board of Appeal had acted contrary to the principle of sound administration also by failing to state the reasons of its decision. It also took the view that the Board had failed to consider the strength of the reputation of the Puma’s trade marks.
The CJEU appeal
The EUIPO appealed to the Court of Justice of the European Union (CJEU) claiming that: (i) the CJEU should set aside the GC judgment, and (ii) order PUMA to pay costs. Puma on the other hand, claimed that the CJEU should: (i) dismiss the appeal, and (ii) order EUIPO to pay the costs.  
The EUIPO relied on two grounds of appeal. The first ground consisted of three parts. First, the GC had infringed Article 95(1) EUTMR and the principle of sound administration of justice and the GC’s findings infringed the principle of equality of arms between the parties. On this basis it argued that the GC’s decision was manifestly wrong. Secondly, the GC had erred in law by stating that the Board of Appeal should have explained the reason why it had not taken into account the EUIPO’s findings in the three previous decisions with regard to the reputation of the earlier marks. In particular, the EUIPO argued that the findings of the GC were based on two erroneous premises, namely reliance on the case law submitted by Puma and the GC’s disregard of ‘reputation’ and the relative nature of the ground for refusal of registration under Article 8(5) of the EUTMR. Thirdly, the GC could not – without infringing Article 95(1) of the EUTMR and the principle of sound administration – conclude that the Board of Appeal was correct in inviting Puma to submit supplementary evidence of the reputation that it claimed.
Puma disputed all parts of the appeal.
The CJEU judgment
The present analysis revolves around the alleged infringement of the legal certainty and sound administration in light of the assessment of the reputation of the earlier marks and Article 8(5) of the EUTMR.
According to the CJEU, it is apparent from the wording of Article 8(5) EUTMR that this requires fulfilment of three cumulative conditions:
  • The marks at issue must be identical or similar;
  • The earlier mark cited in opposition must have a reputation; and
  • There must be a risk that the use without due cause of the sign applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.

The mark’s earlier reputation …
A trade mark has a reputation within the meaning of EU law where it is known by a significant part of the public concerned by the goods or services covered by that mark, within a substantial part of the territory of the EU. In particular, the existence of repute must be assessed by taking into consideration all the relevant factors of the case: the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it (General Motors, C‑375/97).
The opponent is in principle free to choose the form of evidence which it considers useful to submit to the EUIPO in opposition proceedings. The EUIPO is required to examine the evidence submitted and cannot reject a type of evidence on the basis of its form. Article 95(1) of the EUTMR provides that in proceedings relating to relative grounds for refusal, the examination should be restricted to the facts, evidence, and arguments submitted by the parties. The CJEU is under a duty to exercise its powers in accordance with the general principles of EU law, including the principles of equal treatment and sound administration (Agencja Wydawnicza Technopol v OHIM, C‑51/10 P). If an opponent chooses to rely on previous decision to support its claim under Article 8(5) of the EUTMR, it is incumbent on the competent EUIPO bodies to take into account those decisions.
Puma had put forward those earlier decisions in its written pleadings before the GC. Nothing would therefore preclude 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. Hence, the GC was correct in finding that the decisions had been duly relied upon by Puma.  
…and more on the principle of sound administration of justice
The CJEU noted that it is true that EUIPO’s bodies are not automatically bound by previous decisions. Accordingly, each application must be assessed on its own merits. However, that does not mean that that those bodies are relieved of the obligations arising from the principles of sound administration of justice and equal treatment.
The GC was thus right to consider that, in such circumstances, EUIPO’s bodies could not satisfy their obligation to state reasons by merely stating that the lawfulness of EUIPO’s decisions must be assessed solely on the basis [of the previous applicable Regulation No 207/2009] and not on the basis of its earlier decision-making practice.
In light of all the aforementioned arguments, the CJEU concluded that the GC did not disregard the principle of sound administration and in particular the obligation to state reasons for its decisions.
EUIPO raises battle-axe against Puma before Luxembourg bench EUIPO raises battle-axe against Puma before Luxembourg bench Reviewed by Nedim Malovic on Monday, July 09, 2018 Rating: 5

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