Opinion of the Advocate General — ECLI:EU:C:2018:41
Date: 2018-01-25
Language of the case: English
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - unfounded
Origin: Germany

summary of Puma’s arguments, and were examined directly by the Board of Appeal in relation to the fact that they lacked any legally binding force, and in the Board of Appeal’s reasoning included for the sake of completeness. 39 In the second part of its first ground of appeal, EUIPO claims that the General Court erred in law by stating that, in accordance with the principle of good faith as interpreted by the Court of Justice in the judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM (C‑51/10 P, EU:C:2011:139), the Board of Appeal should have explained the reason why it had not taken into account EUIPO’s findings in the three previous decisions with regard to the reputation of the earlier marks. It submits that that finding of the General Court is based on two erroneous premisses, the first of which consisted in acknowledging that it was acceptable to rely on those previous decisions, which was not the case, as was demonstrated by the arguments relied on in the first part of the first ground of appeal. 40 The second erroneous premiss is the General Court’s recognition of the existence of EUIPO’s ‘decision-making practice’ having found that the earlier marks had a reputation, inasmuch as that recognition disregarded the notion of ‘reputation’ and the relative nature of the ground for refusal of registration under Article 8(5) of Regulation No 207/2009, and the adversarial nature of the proceedings provided for in Article 76(1) of that regulation. 41 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. 42 Consequently, the finding of reputation cannot be regarded as a mere finding of fact, which is essentially static, as the General Court wrongly held in paragraph 33 of the judgment under appeal. On the contrary, although it does not strictly depend on the mark applied for, such a finding is subject to the application of the adversarial principle in each individual set of opposition proceedings. In the present case, the General Court’s assessment that the three previous decisions constituted a ‘decision-making practice’ was tantamount to recognising the existence of a ‘presumption of reputation’ which infringes Article 76(1) of Regulation No 207/2009, read in conjunction with Article 8(5) of that regulation. 43 That misconception of the value of the three previous decisions led the General Court to commit other errors in law. The General Court wrongly stated that the Board of Appeal should have provided the reasons why it considered that the findings made in the three previous decisions relating to the reputation of the earlier marks had to be rejected, thereby applying the case-law arising from the judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM (C‑51/10 P, EU:C:2011:139). That case-law is relevant only to ex parte proceedings concerning the refusal of an application for registration on absolute grounds. 44 In any event, even if that case-law were applicable to inter partes proceedings, that would be the case only for issues which have to be raised for reasons of public policy, for issues identified by EUIPO as being facts which are well known, or where a factual situation which has already been established in the proceedings in question is found to be comparable to a factual situation established in earlier proceedings. On the other hand, that case-law cannot be applied in relation to the specific facts relied on in earlier proceedings or the assessments of evidence made in such proceedings in order to make a finding of fact in subsequent proceedings. 45 In the third part of its first ground of appeal, EUIPO argues in essence that the General Court could not, without infringing Article 76(1) of Regulation No 207/2009 and the principle of sound administration, conclude, as it did in paragraph 37 of the judgment under appeal, that the Board of Appeal was under the subsidiary obligation to invite, of its own motion, Puma to submit supplementary evidence of the reputation which it claimed. 46 Puma disputes all three parts of EUIPO’s first ground of appeal. 47 Puma submits, inter alia, that the General Court correctly applied the principle of sound administration, in that it found that Puma ‘duly relied on’ the three previous decisions as part of its duty, under Rule 19(2)(c) of Regulation No 2868/95, to show the reputation of the earlier marks. It is difficult to consider that the act of relying on those three previous decisions merely amounts to a general reference to the documentation produced in the earlier proceedings, when these are definitive decisions made by an administrative authority, recognising the reputation of the marks identified with precision in the notice of opposition, which are published and easily accessible on the EUIPO website, and the relevant passages of which were summarised in that notice in the language of the case. Such decisions thus constitute, in themselves, invaluable and conclusive evidence of the reputation of the earlier marks. Moreover, reputation is an objective fact with an erga omnes effect, and if the only circumstance capable of influencing that reputation is the passage of time, EUIPO provided no analysis in that regard. 48 As regards the second part of EUIPO’s first ground of appeal, Puma argues that the fact that the General Court described the three previous decisions as a ‘decision-making practice’ does not amount to a misconception of either the adversarial nature of the proceedings at hand or of the notion of ‘reputation’, since no rule of EU law authorised EUIPO to disregard or to ignore the principles of equal treatment and sound administration which required it to take into account the three previous decisions and to consider with especial care whether it should decide in the same way or not, or at least to invite, of its own motion, Puma to submit supplementary evidence of the reputation of the earlier marks. 49 With regard to the third part of EUIPO’s first ground of appeal, Puma disputes EUIPO’s arguments, stating, in essence, that the procedural obligations set out by the General Court in paragraph 37 of the judgment under appeal do not in any way prejudice EUIPO’s position in inter partes proceedings. The second ground of appeal 50 By its second ground of appeal, EUIPO argues that, having found in paragraph 37 of the judgment under appeal that the Board of Appeal should have invited Puma to submit supplementary evidence of the reputation of the earlier marks, as it was permitted to do under the third subparagraph of Rule 50(1) of Regulation No 2868/95, the General Court also incidentally infringed Article 76(2) of Regulation No 207/2009. It is clear from the wording, the context and the purpose of that provision that it applies only to the facts relied on and to the evidence presented by the parties on their own initiative. Likewise, it would not be possible to apply that provision by analogy to a situation such as the one in the present case, bearing in mind that there is a specific legal basis for that type of application, namely Article 78(1)(c) of Regulation No 207/2009. Thus, EUIPO submits that none of those two provisions could be used to circumvent EUIPO’s duty of neutrality and the underlying principle of equality of arms. 51 Puma disputes the claim that the General Court’s assessment in paragraph 37 of the judgment under appeal is vitiated by illegality. Findings of the Court of Justice The first and second parts of the first ground of appeal 52 By the first two parts of the first ground of appeal, which should be examined together, EUIPO disputes the General Court’s assessment of Puma’s first plea for annulment advanced before that court alleging infringement of the principles of legal certainty and sound administration in that the Board of Appeal had rejected the evidence relating to the reputation of the earlier marks and had concluded that the reputation of those marks had not been demonstrated for the purposes of Article 8(5) of Regulation No 207/2009. 53 More particularly, EUIPO submits, in essence, that the General Court infringed Article 76(1) of Regulation No 207/2009 and the principle of sound administration, read in conjunction with Rule 19(2)(c) of Regulation No 2868/95 and Article 8(5) of Regulation No 207/2009, in finding, first, that EUIPO’s three previous decisions had been ‘duly relied on’ by Puma before the Opposition Division and, secondly, that, in application of the principles of sound administration and equal treatment, as interpreted by the case-law arising from the judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM (C‑51/10 P, EU:C:2011:139), the Board of Appeal should have taken into account those decisions by considering with especial care whether it should decide in the same way or not, and that it was not authorised to disregard EUIPO’s decision-making practice without providing the slightest explanation as to the reasons which had led it to consider that the findings of fact on the reputation of the earlier marks made in those decisions were not, or were no longer, relevant. 54 In that regard, it is apparent from the wording of Article 8(5) of Regulation No 207/2009 that the application of that provision is subject to the cumulative conditions that: first, the marks at issue must be identical or similar; second, the earlier mark cited in opposition must have a reputation; and, third, there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (see, to that effect, order of 17 September 2015, Arnoldo Mondadori Editore v OHIM, C‑548/14 P, not published, EU:C:2015:624, paragraph 54). 55 More particularly, with regard to the second condition relating to the existence of a mark’s reputation, the only one at issue in the present case, it is clear from the case-law of the Court of Justice that a 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 European Union (see, to that effect, judgment of 3 September 2015, Iron & Smith, C‑125/14, EU:C:2015:539, paragraph 17 and the case-law cited). 56 The existence of repute must be assessed by taking into consideration all the relevant factors of the case, that is to say, in particular, 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 (judgment of 14 September 1999, General Motors, C‑375/97, EU:C:1999:408, paragraph 27). 57 Although the issue whether the earlier marks acquired a reputation, for the purposes of Article 8(5) of Regulation No 207/2009, constitutes a finding which is part of the assessment of the facts by the General Court which cannot be the subject of an appeal, save where the facts and evidence submitted to the General Court are distorted (see, to that effect, judgment of 21 January 2016, Hesse v OHIM, C‑50/15 P, EU:C:2016:34, paragraph 29), the issue whether the evidence presented in support of the reputation was properly obtained and whether the general principles of law and the rules of procedure in relation to the burden of proof and the taking of evidence were observed constitutes a point of law which is subject to review by the Court of Justice (see, to that effect, judgment of 10 May 2012, Rubinstein and L'Oréal v OHIM, C‑100/11 P, EU:C:2012:285, paragraph 74). 58 As regards the burden of proof and the taking of evidence, where the proprietor of a mark wishes to rely on the ground for refusing registration referred to in Article 8(5) of Regulation No 207/2009, Rule 19(1) and (2)(c) of Regulation No 2868/95 provides that EUIPO must give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition, in particular evidence that the earlier mark has a reputation, or to complete any facts, evidence or arguments that have already been submitted. Since Regulation No 207/2009 and Regulation No 2868/95 do not list the forms of evidence which the opponent may present in order to demonstrate the existence of the earlier mark’s reputation, the opponent is free, in principle, to choose the form of evidence which it considers useful to submit to EUIPO in opposition proceedings based on an earlier right; EUIPO is obliged to examine the evidence submitted by the opponent, and cannot reject out of hand a type of evidence on the basis of its form (judgment of 19 April 2018, EUIPO v Group, C‑478/16 P, not published, EU:C:2018:268, paragraphs 56 to 59). 59 Furthermore, Article 76(1) of Regulation No 207/2009 provides that, in proceedings before EUIPO, the latter must, in principle, examine the facts of its own motion. However, that provision provides that, in proceedings relating to relative grounds for refusal of registration, such as the ground provided for in Article 8(5) of that regulation, the examination is to be restricted to the facts, evidence and arguments provided by the parties and the relief sought. 60 In addition, in accordance with the settled case-law of the Court of Justice, EUIPO 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 (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 73, and order of 11 April 2013, Asa v OHIM, C‑354/12 P, not published, EU:C:2013:238, paragraph 41). 61 The Court of Justice has stipulated that, having regard to those principles, 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, as was recalled by the General Court in paragraph 20 of the judgment under appeal, 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 (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 74, 75 and 77, and of 17 July 2014, Reber Holding v OHIM, C‑141/13 P, not published, EU:C:2014:2089, paragraph 45; and order of 14 April 2016, KS Sports v EUIPO, C‑480/15 P, not published, EU:C:2016:266, paragraph 37). 62 In that context, it is necessary to reject out of hand EUIPO’s argument that the General Court erred in law in holding that the principles arising from the judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM (C‑51/10 P, EU:C:2011:139) referred to in the preceding paragraph apply to proceedings based on a relative ground for refusal, such as the one provided for in Article 8(5) of Regulation No 207/2009. 63 Although it is true that those principles were established by the Court of Justice in a case concerning an absolute ground for refusal, that is to say the ground referred to in Article 7(1)(c) of Council Regulation No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), the Court of Justice then expressly ruled that they also applied to opposition proceedings based on a relative ground for refusal (see, to that effect, judgment of 17 July 2014, Reber Holding v OHIM, C‑141/13 P, not published, EU:C:2014:2089, paragraph 46; orders of 11 April 2013, Asa v OHIM, C‑354/12 P, not published, EU:C:2013:238, paragraph 42; of 15 October 2015, Cantina Broglie 1 v OHIM, C‑33/15 P, not published, EU:C:2015:705, paragraph 49; of 15 October 2015, Cantina Broglie 1 v OHIM, C‑34/15 P, not published, EU:C:2015:704, paragraph 49; and of 14 April 2016, KS Sports v EUIPO, C‑480/15 P, not published, EU:C:2016:266, paragraph 37). 64 The Court of Justice has also already explained, as the General Court pointed out in paragraphs 18 and 19 of the judgment under appeal, that the right to sound administration, in accordance with Article 41(2) of the Charter of Fundamental Rights of the European Union, includes the obligation of the administration to give reasons for its decisions. That obligation, which also stems from Article 75 of Regulation No 207/2009, has the dual purpose of enabling interested parties to know the purported justification for the measure taken so as to be able to defend their rights and of enabling the Courts of the European Union to exercise their jurisdiction to review the legality of the decision in question (see, to that effect, judgments of 10 May 2012, Rubinstein and L’Oréal v OHIM, C‑100/11 P, EU:C:2012:285, paragraph 111, and of 17 March 2016, Naazneen v OHIM, C‑252/15 P, EU:C:2016:178, paragraph 29). 65 Furthermore, that obligation has the same scope as that which derives from the second paragraph of Article 296 TFEU which requires that the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question, without it being necessary for that reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets those requirements must, nonetheless, be assessed with regard, not only to its wording, but also to its context and to all the legal rules governing the matter in question (see, to that effect, judgment of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraphs 63 to 65, and order of 14 April 2016, KS Sports v EUIPO, C‑480/15 P, not published, EU:C:2016:266, paragraph 32). 66 It follows from the foregoing that, in circumstances where an opponent relies on earlier EUIPO decisions relating to the reputation of a mark, in a precise manner, before the Opposition Division, as evidence of the reputation, for the purposes of Article 8(5) of Regulation No 207/2009, of the same earlier mark relied on in support of its opposition, it is 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, in accordance with the case-law cited in paragraph 61 above. 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. 67 It is in the light of those considerations that it is necessary to examine whether in the present case, as EUIPO claims, the General Court infringed Article 76(1) of Regulation No 207/2009 and the principle of sound administration, read in conjunction with Rule 19(2)(c) of Regulation No 2868/95 and Article 8(5) of Regulation No 207/2009. 68 With regard, first, to EUIPO’s argument that the General Court erred in law in paragraph 31 of the judgment under appeal in finding that the three previous decisions recognising the reputation of the earlier marks had been ‘duly relied on’ by Puma, it must be observed, first of all, that the General Court found in paragraph 30 of the judgment under appeal that those three previous decisions had been put forward by Puma in its written pleadings before the Opposition Division. 69 As was pointed out in paragraph 58 above, the opponent is free, in principle, to choose the form of evidence which it considers useful to submit to EUIPO. Therefore, nothing precludes 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. 70 In so far as EUIPO claims that, by its finding in paragraph 31 of the judgment under appeal, the General Court accepted that Puma’s reference to those decisions was a valid reference both to all of EUIPO’s assessments and to the evidence submitted by Puma in those earlier proceedings, so that that reference is valid evidence to establish the existence of the reputation of the earlier marks for the purposes of Rule 19(2)(c) of Regulation No 2868/95, it must be stated that that argument is based on a misreading of paragraph 31 which must now be put in context. 71 In that regard, the General Court’s analysis in paragraphs 30 and 31 of the judgment under appeal was intended to address Puma’s argument, summarised in paragraph 28 of that judgment, that the Board of Appeal could not depart from its ‘decision-making process’ recognising the reputation of the earlier marks without explaining how that departure from the three previous decisions was justified. 72 Since EUIPO had responded to that argument, as is clear from paragraph 29 of the judgment under appeal, by referring to the reasoning of the decision at issue, according to which the legality of EUIPO’s decisions must be assessed solely on the basis of Regulation No 207/2009 and not on the basis of an earlier decision-making practice of EUIPO or of the national offices, the General Court set out in paragraph 30 of the judgment under appeal the content of the three previous decisions, by outlining the assessments made by the competent EUIPO bodies in those decisions and by referring to the evidence on which those decisions were based. 73 As is clear from paragraphs 28 to 30 of the judgment under appeal, the General Court made those findings in order to address the issue whether EUIPO, when it adopted the decision at issue, had satisfied the obligations arising from the principle of sound administration, in particular its obligation to state reasons recalled in paragraph 64 and 65 above, in circumstances where Puma, in support of its opposition, had relied on previous decisions of EUIPO concluding that those earlier marks had a reputation, having identified them in a precise manner, and had, by summarising those decisions in the language of the case, specifically referred to the relevant passages of those decisions and the evidence which they contained. 74 It is therefore in the light of those circumstances that the General Court held in paragraph 31 of the judgment under appeal that the three previous decisions had been ‘duly relied on’ by Puma, without, however, accepting that the reference to those decisions constituted a valid reference to all of the evidence lodged in the earlier proceedings brought before the EUIPO bodies. 75 It follows that there was no error of law on the part of the General Court when it found in paragraph 31 of the judgment under appeal that the three previous decisions had been ‘duly relied on’ by Puma. 76 Secondly, with regard to EUIPO’s argument that the General Court disregarded the principle of sound administration and the scope of the obligation to state reasons by which EUIPO was bound, it must be stated that, in accordance with the case-law cited in paragraphs 61, 64 and 65 above and with what was held in paragraph 66 above, EUIPO was required to take into account the three previous decisions relied on by Puma in the present case and, were it to depart from the approach adopted in those decisions on the issue of the reputation of the earlier marks examined in those decisions and in the present case, it was incumbent on EUIPO, in view of the context of the decision at issue, to provide an explicit statement of its reasoning for that departure. 77 In that regard, it should be recalled that the General Court examined the three previous decisions relied on by Puma before the Opposition Division in paragraph 30 of the judgment under appeal — the wording of which is not called into question in the present appeal — by setting out the substantive content of those decisions. The General Court went on to note in paragraph 33 of the judgment under appeal that the reputation of the earlier marks had been established by EUIPO in those three previous decisions which were borne out by a number of national decisions concerning the same earlier marks, goods that were identical or similar to those at issue and some of the Member States concerned by the present case, adding that the finding that the earlier marks had a reputation was a finding of a factual nature which did not depend on the mark applied for. 78 In paragraph 34 of the judgment under appeal, the General Court concluded that ‘accordingly’, and having regard to the obligations stemming from the principles of sound administration and equal treatment, ‘the Board of Appeal could not depart from EUIPO’s decision-making practice without providing the slightest explanation regarding the reasons which led it to take the view that the factual findings in respect of the reputation of the earlier trade marks, which were made in [the three previous decisions, were not, or were no longer,] relevant.’ 79 Thus the General Court was right to examine whether the Board of Appeal, by merely stating in the decision at issue that EUIPO was not bound by its decision-making practice, had satisfied its obligation to state reasons, in view of the context in which that decision had been made and in view of the legal rules governing the matter in question, including the principles of sound administration and equal treatment. 80 Contrary to what EUIPO claims, there was no error in law on the part of the General Court as regards its interpretation of those principles. In that regard, it is true that EUIPO’s bodies are not automatically bound by their previous decisions, given that, as the General Court rightly pointed out in paragraph 20 of the judgment under appeal, the examination of any trade mark application must be stringent and full in order to prevent trade marks from being improperly registered, so that the existence of reputation must be examined by taking into account the factual circumstances of each individual case (see, by analogy, order of 12 February 2009, Bild digital and ZVS, C‑39/08 and C‑43/08, not published, EU:C:2009:91, paragraph 17, and, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 77). It does not follow, however, that those bodies are relieved of the obligations set out in paragraph 66 above, arising from the principles of sound administration and equal treatment, including the obligation to state reasons. 81 The latter obligation is all the more important in circumstances such as those of the present case, set out in paragraph 77 above, in which the relevance of some of EUIPO’s previous decisions relied on before its bodies for the purposes of carrying out a complete examination of the existence of the reputation of the earlier mark at issue cannot be disputed, given that such an examination, as the General Court pointed out, in essence, does not strictly depend on the mark applied for. 82 The General Court was therefore 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 Regulation No 207/2009 and not on the basis of its earlier decision-making practice. 83 Finally, in so far as EUIPO claims that the General Court wrongly found in paragraph 31 of the judgment under appeal that the three previous decisions were ‘not examined or even mentioned’ in the decision at issue, suffice it to state that that line of argument does not succeed, since the General Court’s finding cannot be regarded as running counter to the content of that decision. 84 Although it is true that in the part of the decision at issue entitled ‘Submissions and arguments of the parties’, the Board of Appeal indicated that Puma had raised the argument that the reputation of the earlier marks had been recognised ‘in numerous Office decisions’, the fact remains that the Board of Appeal failed to cite from among the ‘evidence submitted by the opponent’ the three previous decisions and that, in the part of that decision entitled ‘Reasons’, it neither mentioned nor analysed those decisions with regard to their content or their probative value in relation to the possible reputation of the earlier marks, whereas it did do that in relation to a number of decisions of the national offices. 85 In view of all the foregoing considerations, it must be concluded that the General Court did not disregard Article 76(1) of Regulation No 207/2009 or the principle of sound administration, read in conjunction with Rule 19(2)(c) of Regulation No 2868/95 and Article 8(5) of Regulation No 207/2009, in holding that the Board of Appeal, by merely stating that, in circumstances such as those of the present case, the lawfulness of EUIPO’s decisions must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the European Union Courts, and not on the basis of an earlier decision-making practice of EUIPO or of the national offices, 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. 86 It follows that the first and second parts of the first ground of appeal must be rejected as unfounded. Third part of the first ground of appeal and the second ground of appeal 87 By the third part of the first ground of appeal and by the second ground of appeal, which should be examined together, EUIPO alleges that the General Court infringed Article 76(1) of Regulation No 207/2009, read in conjunction with the principle of sound administration, and Article 76(2) of that regulation, read in conjunction with Rule 50(1) of Regulation No 2868/95, by holding in paragraph 37 of the judgment under appeal that, in the circumstances of the case, the Board of Appeal should have invited Puma to submit supplementary evidence of the reputation of the earlier marks — if only to refute that evidence — as it was permitted to do by the third paragraph of Rule 50(1) of Regulation No 2868/95. 88 EUIPO argues, in particular, that such an interpretation of those provisions and principles infringes the adversarial principle, as expressed in Article 76(1) of Regulation No 207/2009 in relation to inter partes proceedings before EUIPO, and disregards the fact that EUIPO’s obligation to exercise its discretion to decide whether or not to take into account facts and evidence submitted late applies only to the facts and evidence presented by the parties on their own initiative. 89 Thus, by its line of argument, EUIPO in essence criticises the General Court for having transformed the Board of Appeal’s discretion under Article 76(2) of Regulation No 207/2009, read in conjunction with Rule 50(1) of Regulation No 2868/95, to decide whether to take into account supplementary facts and evidence which were not presented within the time limits set by the Opposition Division, into an obligation, with that obligation, in EUIPO’s opinion, also being wrongly extended to the facts and evidence which the parties did not submit of their own initiative. 90 In that regard, it is clear from paragraph 35 of the judgment under appeal that EUIPO argued before the General Court that the Board of Appeal was not required to take into account the three previous decisions on the ground that Puma had not provided the Opposition Division with the evidence of the reputation of the earlier marks produced in the proceedings which led to those decisions being adopted. According to EUIPO, Puma should have lodged that evidence again or referred to it in a precise manner. 91 In reply to that line of argument, the General Court, in paragraph 36 of the judgment under appeal, correctly referred to the case-law according to which Article 76(2) of Regulation No 207/2009 and the third subparagraph of Rule 50(1) of Regulation No 2868/95 grant EUIPO the discretion to decide whether or not to take into account additional or supplementary facts and evidence which were not presented within the time limits set or specified by the Opposition Division. In accordance with those provisions, when evidence is produced within the time limit set by EUIPO, as it is agreed to be in the present case, the production of supplementary evidence remains possible (see, to that effect, judgment of 21 July 2016, EUIPO v Grau Ferrer, C‑597/14 P, EU:C:2016:579, paragraph 26 and the case-law cited). 92 However, by stating in paragraph 37 of the judgment under appeal that ‘in the circumstances of the present case, in the light of its recent previous decision-making practice, which is borne out by a relatively high number of national decisions and by a judgment of the General Court, the Board of Appeal should, in accordance with the principle of sound administration ... have ... requested that the applicant submit supplementary evidence of the reputation of the earlier marks — if only to rebut it — as the third subparagraph of Rule 50(1) of Regulation No 2868/95 enabled it to do’, the General Court did not rely on Article 76(2) of Regulation No 207/2009 and the third subparagraph of Rule 50(1) of Regulation No 2868/95, but on the principle of sound administration. 93 In the present case, it is clear from paragraphs 30, 33 and 37 of the judgment under appeal that, in the notice of opposition, the substantive content of the three previous decisions was set out by Puma in the language of the case, such that it must be considered that that content was made known to the Opposition Division and the Board of Appeal, and to Gemma Group. 94 It is also clear from paragraph 30 of the judgment under appeal that, in the three previous decisions, the competent EUIPO bodies had established that one of the earlier marks had been found, ‘on the basis of a large number of items of evidence’, to have a ‘substantial reputation, at least in France’ and that one of them was also considered ‘in the light of the extensive evidence provided,’ to have acquired ‘a substantial reputation through use in the European Union’, enjoying a ‘high degree of distinctiveness as a result of its “long standing and intensive use” and “high degree of recognition”’. The General Court also established that some of those decisions described in great detail the evidence which had led to the conclusion that the earlier marks had a reputation. 95 In that context, the three previous decisions, in so far as they had recognised the reputation of the earlier marks, were a strong indication, in the opposition proceedings at issue, that those marks could also be regarded as having a reputation for the purposes of Article 8(5) of Regulation No 207/2009, as has already been stated in paragraph 81 above. 96 Therefore, as has already been held in paragraph 76 above, EUIPO was required to take into account the three previous decisions relied on by Puma and had to provide an explicit statement of its reasoning in the present case in so far as it had decided to depart from the approach adopted in those decisions on the reputation of the earlier marks. 97 That being so, if the Board of Appeal itself were to reach the conclusion that it could not satisfy its obligations arising from the principle of sound administration and, in that context in particular, its obligation to state reasons, recalled in paragraph 66 above, without the evidence which had been lodged in the earlier proceedings before EUIPO, it must be considered, as the General Court did, that 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. 98 It must be recalled in that respect, as the Court of Justice has already held, that it follows from Article 63(2) of Regulation No 207/2009, read in conjunction with Article 78 of that regulation, that, for the purposes of the examination of the merits of the appeal brought before it, the Board of Appeal of EUIPO is not only to invite the parties, as often as necessary, to file, within time limits which it sets, observations on notifications which it has sent to them, but may also decide on measures of inquiry, including the production of facts or evidence. In turn, such provisions demonstrate the possibility of seeing the underlying facts of a dispute multiply at various stages of the proceedings before EUIPO (judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 58, and of 28 February 2018, mobile.de v EUIPO, C‑418/16 P, EU:C:2018:128, paragraph 57). 99 In the light of that case-law and the case-law recalled in paragraph 91 above, according to which, when evidence is produced within the time limit set by EUIPO, the production of supplementary evidence remains possible, an obligation, such as the one established by the General Court in paragraph 37 of the judgment under appeal pursuant to the principle of sound administration, cannot be regarded as running counter to the provisions of Regulation No 207/2009. 100 Thus, the General Court did not err in law in concluding in paragraph 37 of the judgment under appeal that, in the circumstances of the present case, it was incumbent on the Board of Appeal, in accordance with the principle of sound administration, either to 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. 101 In view of all of the foregoing considerations, the third part of the first ground of appeal and the second ground of appeal raised by EUIPO must be rejected as unfounded. 102 Since the grounds and arguments raised in support of the appeal have been rejected, the appeal must be dismissed. Costs 103 Under Article 184(2) of the Rules of Procedure of the Court of Justice, where the appeal is unfounded, the Court is to make a decision as to the costs. 104 Under Article 138(1) of those rules, applicable to appeal proceedings by virtue of Article 184(1) thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. 105 Since EUIPO has been unsuccessful and Puma has applied for costs, EUIPO must be ordered to pay the costs. On those grounds, the Court (Second Chamber) hereby: 1. Dismisses the appeal; 2. Orders the European Union Intellectual Property Office (EUIPO) to pay the costs. Ilešič Lenaerts Rosas Toader Jarašiūnas Delivered in open court in Luxembourg on 28 June 2018. A. Calot Escobar M. Ilešič Registrar President of the Second Chamber * Language of the case: English.