ORDER OF THE GENERAL COURT (First Chamber)
22 May 2019(*) (1)
(EU trade mark — Opposition proceedings — International registration designating the European Union — Figurative mark CMS Italy — Earlier international figurative marks representing a feline bounding to the left — Relative grounds for refusal — Reputation of the earlier marks — Article 8(5) of Regulation (EC) No 207/2009 (now Article 8(5) of Regulation (EU) 2017/1001) — Evidence of reputation — Previous decisions of EUIPO recognising the reputation of the earlier marks — Taking account of those decisions — Obligation to state reasons — Principle of sound administration)
In Case T‑161/16,
Puma SE, established in Herzogenaurach (Germany), represented by P. González-Bueno Catalán de Ocón, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Walicka, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Costruzione Macchine Speciali Srl (CMS), (Alonte, Italy)
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 29 January 2016 (Case R 229/2015-2), relating to opposition proceedings between Puma and Costruzione Macchine Speciali (CMS),
THE GENERAL COURT (First Chamber),
composed of I. Pelikánová, President, P. Nihoul and J. Svenningsen (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 18 April 2016,
having regard to the response lodged at the Court Registry on 30 June 2016,
having regard to the decision of 17 November 2016 to stay the proceedings,
having regard to the measure of organisation of procedure of 6 July 2018 and the replies of Puma and of EUIPO lodged at the Court Registry on 23 July 2018,
having regard to the measure of organisation of procedure of 13 February 2019 and the replies of Puma and of EUIPO lodged at the Court Registry on 15 and 22 February 2019,
makes the following
Order
Background to the dispute
1        On 21 December 2012, Costruzione Macchine Speciali Srl (CMS) designated the European Union, with effect from 14 December 2012, in the context of its application for protection of international registration No 1150538.
2        The mark in respect of which that designation was made is the following figurative sign:
3        The goods in respect of which protection was sought are in Classes 7, 11 and 37 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 7: ‘Apparatus and industrial machine tools for making all types of heat exchanger’;
–        Class 11: ‘Systems and equipment for heating, air conditioning, refrigeration, heat exchange, ventilation, steam generating, drying’;
–        Class 37: ‘Installation, maintenance and repair of systems, equipment and industrial machine tools for making all types of heat exchanger.’
4        The application for protection was published in Community Trade Marks Bulletin No 48/2013 of 8 March 2013.
5        On 21 November 2013, the applicant, Puma SE, filed a notice of opposition, pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p.1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)), and in particular Article 156 of that regulation (now Article 196 of Regulation 2017/1001), read in conjunction with Article 41 of that regulation (now Article 46 of Regulation 2017/1001), to the international registration designating the European Union No 1150538 for the goods referred to in paragraph 3 above.
6        The opposition was based on the following international registrations:
–        international registration No 480105, with effect in Austria, Benelux, Croatia, France, Hungary, Italy, Portugal, the Czech Republic, Romania, Slovakia and Slovenia, designating goods in Classes 18, 25 and 28, for the figurative mark reproduced below:
–        international registration No 582886, with effect in Bulgaria, Benelux, the Czech Republic, Germany, Estonia, Greece, Spain, France, Italy, Cyprus, Latvia, Lithuania, Hungary, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland and the United Kingdom, designating goods, inter alia, in Classes 18, 25 and 28, for the figurative mark reproduced below:
–        international registration No 593987, with effect in Austria, Benelux, Bulgaria, Cyprus, Croatia, Spain, Estonia, Finland, France, Greece, Hungary, Italy, Latvia, Lithuania, Poland, Portugal, the United Kingdom, the Czech Republic, Romania, Slovenia and Slovakia, designating goods, inter alia, in Classes 18, 25 and 28, for the figurative mark reproduced below:
7        The ground relied on in support of the opposition was that set out in Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001).
8        On 28 November 2014, the Opposition Division rejected the opposition on the ground that the reputation of the earlier marks had not been established.
9        On 26 January 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
10      By decision of 29 January 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal on the ground that the applicant had not adduced evidence of the reputation of the earlier marks. To that end, it found that the evidence submitted before the Opposition Division was manifestly insufficient, since it did not contain any specific and relevant information regarding the reputation of the earlier marks and it could not take account of evidence submitted for the first time in the appeal proceedings.
11      More specifically as regards, in the first place, the evidence submitted before the Opposition Division, the Board of Appeal, first, approved the Opposition Division’s decision, in so far as it had excluded a set of documents drawn up in a language other than the language of the proceedings which were not accompanied by a translation into that language within the time limit specified for that purpose (Annexes 1, 3, 5 and 6 to the notice of opposition). It noted, in that regard, that the report of a survey carried out in France (Annex 1 to the notice of opposition), only the conclusion of which had been translated, could not be considered to be self-explanatory evidence which did not have to be translated. Secondly, as regards the decisions of national authorities, a partial translation of which was produced (Annexes 10 and 12 to 18 to the notice of opposition), the Board of Appeal considered that those translations did not contain any indication on certain essential information regarding the earlier marks, namely the information which led those authorities to conclude that the earlier marks enjoyed a reputation and the evidence adduced and, furthermore, it was not certain that reputation had been claimed in the proceedings referred to in Annexes 12 and 14 to 18 to the notice of opposition. Thirdly, as regards the decisions of national authorities, a full translation of which was produced (Annexes 4 and 7 to 11 to the notice of opposition), the Board of Appeal likewise found that those decisions contained no indication on essential information concerning the earlier marks, namely the sales volumes, the market shares or the extent of promotion and, apart from the Polish authority’s decision, which forms Annex 4, the evidence adduced and the arguments put forward, in addition to the evidence submitted before those authorities, was not submitted before the Opposition Division, so that it was not in a position to verify accurately whether those decisions were based on conclusive evidence. Fourthly and finally, concerning the survey carried out in Sweden (Annex 2 to the notice of opposition), the Board of Appeal, inter alia, upheld the Opposition Division’s assessment that that survey did not concern a territory which was relevant in the present case.
12      In the second place, as regards the evidence submitted to it for the first time, the Board of Appeal considered that it was not entitled to take it into account, pursuant to the third subparagraph of Rule 50(1) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) (replaced by Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)), read in conjunction with Article 76(2) of Regulation No 207/2009 (now Article 95(2) of Regulation 2017/1001).
13      In that regard, first, the Board of Appeal confirmed that the documents filed within the time limit set by the Opposition Division for filing documents for the purpose of proving the reputation of the earlier marks were manifestly inadequate and, furthermore, they were partially irrelevant. Therefore, the evidence filed out of time before the Board of Appeal was not ‘additional’ evidence, within the meaning of the third subparagraph of Rule 50(1) of Regulation No 2868/95, but, in fact, the main evidence of the reputation of the earlier marks, so that the Board of Appeal did not have any discretion allowing it to take that evidence into account. Secondly, and in any event, having found, inter alia, that Rule 19(2)(c) and 19(3) of Regulation No 2868/95 (now Article 7(2)(f) and 7(4) of Delegated Regulation 2018/625) stated precisely and exhaustively the evidence that the applicant had to provide, the Board of Appeal considered that, in such a situation, it could exercise its discretion only restrictively and only if the circumstances were such as to justify the opponent’s delay. However, the opponent did not put forward any legitimate reason in that regard and the documents before the Court did not reveal any circumstances which were capable of justifying its delay in filing the documents that were available.
Forms of order sought
14      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and Costruzione Macchine Speciali (CMS) to pay the costs.
15      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
16      Under Article 132 of the Rules of Procedure of the General Court, where the Court of Justice or the General Court has already ruled on one or more questions of law identical to those raised by the pleas in law of the action, and the General Court finds that the facts have been established, it may, after the written part of the procedure has been closed, on a proposal from the Judge-Rapporteur and after hearing the parties, decide by reasoned order, in which reference is made to the relevant case-law, to declare the action manifestly well founded.
17      In the observations which it lodged following the measure of organisation of procedure of 13 February 2019, EUIPO reiterated the point of view it had previously expressed in response to the measure of organisation of procedure of 6 July 2018, concerning the judgment of 28 June 2018, EUIPO v Puma (C‑564/16 P, EU:C:2018:509), namely that the circumstances of the present case differed from those which gave rise to that judgment because, in the present case, the Board of Appeal clearly stated why it had decided not to follow the previous decisions of EUIPO that the applicant had relied on as evidence of the reputation of the earlier marks.
18      In the present case, the Court considers that the conditions for applying Article 132 of the Rules of Procedure have been met and has decided to give a decision without taking further steps in the proceedings, as the facts of the present case, which are established, do not differ in essence from those of the case that gave rise to the judgment of 28 June 2018, EUIPO v Puma (C‑564/16 P, EU:C:2018:509), contrary to what EUIPO contends in the observations referred to in paragraph 17 above. As follows, inter alia, from paragraph 58 below, the ground of the contested decision referred to by EUIPO did not concern the decision whether to follow the previous decisions relied on by the applicant as evidence of reputation, but the admissibility of one of the items of evidence submitted by the applicant.
19      The applicant puts forward, in essence, two pleas in law alleging, first, infringement of the rules relating to the taking of evidence applicable in opposition proceedings based on the ground referred to in Article 8(5) of Regulation No 207/2009 and, secondly, infringement of the principles of legal certainty, equal treatment and sound administration.
20      By the first plea in law, the applicant complains that the Board of Appeal infringed the rules on the taking of evidence applicable in opposition proceedings based on the ground referred to in Article 8(5) of Regulation No 207/2009, in particular Article 76(1) and (2) of that regulation (Article 76(1) now being Article 95(1) of Regulation 2017/1001) and Rule 19(2)(c) of Regulation No 2868/95, by failing to take into consideration the reputation of the earlier marks as a matter of common knowledge and by refusing to take into account the additional evidence that it had adduced in the appeal against the Opposition Division’s decision, even though, first, that additional evidence supplemented the relevant evidence which had been submitted within the time limit set by the Opposition Division, namely, in essence, EUIPO’s previous decisions finding that the earlier marks enjoyed a reputation and, secondly, the applicant set out why it had submitted that additional evidence before the Board of Appeal, namely, specifically, the Opposition Division’s failure to take into consideration the relevant evidence that was submitted before it.
21      By the second plea in law, the applicant complains that the Board of Appeal infringed the principles of legal certainty, equal treatment and sound administration by implicitly refusing, without giving any reason, to take into consideration various previous decisions of EUIPO adopted in other opposition proceedings based on the reputation of the same earlier marks, in so far as those decisions, first, held that those marks enjoyed a reputation and, secondly, accepted as evidence the report of the survey carried out in France, which formed Annex 1 to the notice of opposition in the opposition proceedings in question, without having required that report to be translated into the language of the proceedings.
22      It is appropriate to deal with those two pleas together, by examining together, first of all, the first complaint of the second ground of appeal, concerning the failure to take into consideration previous decisions of EUIPO, relied on by the applicant as evidence of the reputation of the earlier marks, and the second complaint of the first plea, concerning the failure to take into consideration the documents annexed to the statement setting out the grounds of appeal before the Board of Appeal.
23      By those complaints, the applicant essentially criticises the Board of Appeal for having, without giving reasons for doing so, implicitly refused to take into consideration various previous decisions of EUIPO which found that the earlier marks enjoyed a reputation, even though those decisions were relied on in the opposition proceedings in question, both before the Board of Appeal and before the Opposition Division, as evidence of the reputation of the earlier marks.
24      In addition, according to the applicant, since those previous decisions were invoked in good time before the Opposition Division and constituted relevant evidence for the purposes of establishing the reputation of the earlier marks, whose non-consideration by that division justifiably took the applicant by surprise, the Board of Appeal could not lawfully decide, in the context of the assessment which it was required to carry out pursuant to the third subparagraph of Rule 50(1) of Regulation No 2868/95, read in conjunction with Article 76(2) of Regulation No 207/2009, that the additional evidence produced by the applicant as an annex to the statement setting out the grounds of appeal could not be taken into account in the absence of circumstances justifying its submission out of time.
25      EUIPO disputes that those complaints are well founded.
26      It submits that the reference made by an opponent to previous decisions of the adjudicating bodies of EUIPO, which found that the earlier trade mark relied on in support of its opposition enjoyed a reputation, cannot be regarded as a proof of the reputation of that mark, within the meaning of Article 8(5) of Regulation No 207/2009. As the Opposition Division correctly stated, the lawfulness of EUIPO’s decisions must be assessed on the basis of Regulation No 207/2009, as interpreted by the European Union judicature, and not on the basis of a previous decision-making practice.
27      Furthermore, EUIPO observes that the Board of Appeal gave two reasons for not taking the evidence adduced before it by the applicant into consideration. First, it considered that, having regard to the blatant insufficiency of the evidence submitted within the time limit set by the Opposition Division for the purpose of establishing the reputation of the earlier marks, the evidence annexed to the statement setting out the grounds of appeal was not additional evidence, but the main evidence of reputation, so that that evidence was inadmissible, pursuant to the third subparagraph of Rule 50(1) of Regulation 2868/95, read in conjunction with Article 76(2) of Regulation No 207/2009. Secondly, the Board of Appeal took the view that, even assuming that those provisions require it to consider whether to take account of such primary evidence submitted out of time before it, it should exercise its discretion restrictively, so that such evidence may be accepted only if certain circumstances could justify that delay, which was not the case since the documents concerned could have been produced within the time limit set by the Opposition Division. The explanation given in that regard by the applicant, namely that the previous decisions of EUIPO, which it had relied on before the Opposition Division, constituted evidence of reputation, was incorrect and the error regarding the probative value of those decisions could not be regarded as a valid justification for submitting evidence out of time.
28      Finally, in its written reply to the question put by way of measure of organisation of procedure of 6 July 2018, EUIPO stated that the Board of Appeal had expressly stated that the report of the survey carried out in France could not be taken into account because there was no translation of essential parts of that report. In doing so, it did not endorse the reasons for the Opposition Division’s decisions, relied on by the applicant, and gave express reasons for taking a different decision.
29      In that regard, it is necessary to recall certain essential considerations set out by the Court in the judgment of 28 June 2018, EUIPO v Puma (C‑564/16 P, EU:C:2018:509), which justify Article 132 of the Rules of Procedure being applied in the present case.
30      It follows from Rule 19(2)(c) of Regulation No 2868/95 that, in the event of an opposition based on the ground set out in Article 8(5) of Regulation No 207/2009, the opponent is free, in principle, to choose the form of evidence of the reputation of the earlier mark which it considers useful to submit to EUIPO and, therefore, that 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. Therefore, the opponent is free to rely on, as evidence of the reputation of the earlier mark relied upon in support of the opposition, one or several previous decisions of EUIPO finding that that mark enjoys a reputation and EUIPO is required, in those circumstances, to take into account those decisions (see, to that effect, judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraphs 58, 69 and 76).
31      Where previous decisions of EUIPO that an opponent relies on as evidence, in so far as they found that the earlier trade mark relied on in support of its opposition under Article 8(5) of Regulation No 207/2009 had a reputation, are detailed as regards the evidential basis and the facts on which that finding is based, those decisions are a strong indication that that mark could also be regarded as having a reputation for the purposes of that provision in the ongoing opposition proceedings (judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraphs 94 and 95). Such a finding is of a factual nature and does not depend on the mark applied for (see, to that effect, judgments of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 81, and of 9 September 2016, Puma v EUIPO — Gemma Group (Representation of a bounding feline), T‑159/15, EU:T:2016:457, paragraph 33).
32      Furthermore, it should be noted that the principles of equal treatment and sound administration require EUIPO to take into account decisions taken in respect of similar applications and to consider with especial care whether it should decide in the same way or not, while respecting the principle of legality. That obligation exists both in proceedings concerning an absolute ground for refusal of registration and in those concerning a relative ground for refusal of registration (see, to that effect, judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraphs 60 to 63).
33      The principle of sound administration also includes the administration’s obligation to state reasons for its decisions. That obligation, which concerning EUIPO’s decisions also stems from Article 75 of Regulation No 207/2009, requires EUIPO to disclose in a clear and unequivocal manner the reasoning behind its decisions. Compliance with that obligation must be assessed with regard to the wording of the contested decision, its context and all the legal rules governing the matter in question. The arguments put forward in the administrative procedure are part of that context (see, to that effect, judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraphs 64 to 66).
34      Therefore, where an opponent relies on previous decisions of EUIPO relating to the reputation of a mark, in a precise manner, before the Opposition Division, as evidence of the reputation of the earlier mark on which its opposition is based under Article 8(5) of Regulation No 207/2009, there is an obligation incumbent on the adjudicating bodies of EUIPO to examine and to state reasons, in accordance with which they must take into account the decisions which they have already adopted and consider with especial care whether or not they should decide in the same way. Where those bodies decide to take a different view from the one adopted in those previous decisions concerning the reputation of the mark concerned, they should provide an explicit statement of their reasoning for departing from those decisions, indicating why they are not or no longer relevant (see, to that effect, judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraphs 66 and 76).
35      In that regard, it should be considered that an opponent relies on previous decisions of EUIPO, in a precise manner, within the meaning of paragraph 34 above, in particular, where, in the notice of opposition, it identifies them in a precise manner and sets out their substantive content in the language of the opposition proceedings (see, to that effect, judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 69).
36      Finally, it may be that the adjudicating body of EUIPO, before which previous decisions of EUIPO recognising that the earlier mark enjoyed a reputation are relied on, does not consider it possible to fulfil the obligation arising, in such a case, from the principle of sound administration, namely to examine the relevance of those previous decisions as to the decision it must itself take and, where relevant, to provide an explicit statement of its reasons for a different assessment, without the evidence which had been adduced in the opposition proceedings which gave rise to those previous decisions. In that situation, that body has no choice but to exercise the power available to it under Article 63(2) and Article 78 of Regulation No 207/2009 (now Article 70(2) and Article 97 of Regulation 2017/1001), to request the production of that evidence for the purposes of exercising its discretion and carrying out a full examination of the opposition (judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraphs 97 and 98).
37      The exercise of that power by the Board of Appeal is in accordance with the third subparagraph of Rule 50(1) of Regulation No 2868/95, read together with Article 76(2) of Regulation No 207/2009, since the evidence was submitted within the period initially prescribed by the Opposition Division (see, to that effect, judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraphs 91, 98 and 99).
38      It is on the basis of all of the foregoing considerations that the Court must assess the merits of the applicant’s two complaints referred to in paragraph 22 above, by which it criticises the Board of Appeal, first, for failing to take into account previous decisions of the adjudicating bodies of EUIPO, which had duly been relied on before the Board of Appeal and, secondly, for excluding as inadmissible, because of its submission out of time with no reasons for this being given, the evidence submitted as an annex to the statement setting out the grounds of appeal.
39      In that regard, it should be noted, first of all, that the applicant relied on three previous decisions of EUIPO, in a precise manner, as evidence of the reputation of the earlier marks.
40      In paragraph 1.2 of the notice of opposition and in paragraph 2.1 of the statement of grounds of appeal before the Board of Appeal, the applicant relied on EUIPO’s decisions of 20 August 2010 in opposition proceedings B 1459017, concerning the earlier mark covered by international registration No 593987, of 30 August 2010 in opposition proceedings B 1287178, concerning that earlier mark, and of 30 May 2011 in opposition proceedings B 1291618, concerning that earlier mark and the mark covered by international registration No 480105.
41      Secondly, those previous decisions of EUIPO were expressly relied on as evidence. Furthermore, it must be considered, in the context of the opposition proceedings in question, that those previous decisions were relied on as evidence of the reputation of the earlier marks concerned in those decisions.
42      The applicant relied on those previous decisions in direct relation to the sole ground relied on in support of the opposition, namely that referred to in Article 8(5) of Regulation No 207/2009 and, although in the relevant passages of its written pleadings it sometimes used words such as ‘enhanced distinctiveness’ or ‘high degree of distinctiveness’, elsewhere in those passages it used the word ‘reputation’ or the words ‘well known character’, which refer to the concept of a well-known trade mark within the meaning of Article 8(2) of Regulation No 207/2009, which is the kindred concept of reputation within the meaning of Article 8(5) (see, to that effect, judgment of 22 November 2007, Nieto Nuño, C‑328/06, EU:C:2007:704, paragraph 17) and is based on the same assessment criteria as that concept (see, to that effect, judgment of 3 May 2018, J-M.-E. V. e hijos v EUIPO — Masi (MASSI), T‑2/17, not published, EU:T:2018:243, paragraph 52). In addition, the main content of those passages and references to previous decisions of EUIPO concerns the reputation or the high degree of knowledge or recognition enjoyed by the marks to which they refer.
43      EUIPO, moreover, does not dispute that fact.
44      Finally, those previous decisions were relied on in a precise manner, as, in the notice of opposition and, subsequently, in the statement of grounds of appeal before the Board of Appeal, some relevant passages from those decisions were reproduced in order to recall EUIPO’s assessment regarding the reputation of the earlier marks concerned and the considerations on which that assessment was based.
45      It has, moreover, previously been held by the General Court in paragraph 30 of the judgment of 9 September 2016, Representation of a bounding feline (T‑159/15, EU:T:2016:457), that the three previous decisions of the adjudicating bodies of EUIPO relied on by the applicant constituted a recent decision-making practice which concluded that the marks concerned, which are two of the three earlier marks concerned in the opposition proceedings in question, enjoyed a reputation and that they were widely known by the public. In addition, it should be noted that those decisions concerned identical or similar goods to those in question and some of the Member States concerned in the present case.
46      Therefore, in the light of the obligation to examine and to state reasons arising from the principle of sound administration, it was incumbent on the Board of Appeal to take into account the decisions of EUIPO relied on by the applicant and to consider with especial care whether or not it should decide in the same way and, if not, to provide an explicit statement of its reasoning for departing from those decisions, stating why those decisions were not, or were no longer, relevant.
47      It should be noted, in the first place, that the Board of Appeal implicitly decided not to take into consideration the previous decisions of EUIPO relied on by the applicant and did not give specific reasons for its decision in that regard. However, since, in so doing, it decided in the same way as the Opposition Division, it is necessary to take into account the statement of reasons provided on that point in the Opposition Division’s decision, summarised in the penultimate indent of paragraph 6 of the contested decision, having regard to the continuity in terms of functions between the Opposition Divisions and the Boards of Appeal (see, to that effect, judgment of 22 September 2016, Sun Cali v EUIPO– Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 46 and the case-law cited).
48      That reasoning, according to which the legality of EUIPO’s decisions must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the EU courts, and not on the basis of EUIPO’s previous decision-making practice, did not, however, clearly satisfy, having regard to the case-law referred to in paragraphs 30 to 37 above, the obligations arising from the principle of sound administration, since it misconstrues the possible relevance of previous decisions of EUIPO, particularly as regards decisions that had already established the reputation of the earlier trade mark relied on in support of an opposition based on the ground set out in Article 8(5) of Regulation No 207/2009.
49      In the second place, the contested decision is affected by a similar irregularity in that the Board of Appeal refused to take into account the evidence submitted by the applicant as an annex to the statement setting out the grounds of appeal, even though the applicant had duly invoked several previous decisions of EUIPO in the notice of opposition, whatever the reasons given in that regard.
50      First, in so far as the Board of Appeal provided reasons for disregarding that evidence, primarily, on the basis that no relevant evidence was filed by the applicant within the time limit set by the Opposition Division, it infringed both the freedom, enjoyed by the opponent, to provide such evidence as it sees fit concerning the reputation of the earlier mark relied on by it in support of an opposition based on the ground set out in Article 8(5) of Regulation No 207/2009, as was pointed out in paragraph 30 above, and the specific value of previous decisions which found that that mark enjoyed a reputation.
51      Secondly, the alternative ground for not taking into account the evidence concerned, according to which there was no circumstance that justified the late production of that evidence relating to the reputation of the earlier marks, is also based on the incorrect premiss that the previous decisions of EUIPO, which found that two of those marks enjoyed a reputation, did not constitute relevant evidence with the result that the Opposition Division was not obliged to take them into consideration, even though those decisions had been specifically invoked by the opponent within the time limit set by that division. Moreover, it should be noted that, since the evidence submitted before the Board of Appeal was in part evidence considered by the adjudicating bodies of EUIPO in the opposition proceedings which gave rise to those previous decisions, it was evidence which, in the present case, the Opposition Division and, by default, the Board of Appeal should have requested to be filed if they considered that they were unable to meet their obligation to examine and to state reasons arising from the principle of sound administration, as follows from paragraphs 97 and 98 of the judgment of 28 June 2018, EUIPO v Puma (C‑564/16 P, EU:C:2018:509), referred to in paragraph 36 above.
52      The arguments put forward in EUIPO’s statement and observations are not such as to call into question the foregoing considerations.
53      That is the case, in the first place, as regards the assertion that the taking into account of previous decisions of the adjudicating bodies of EUIPO which found that that mark had a reputation in other opposition proceedings is contrary to the rights of the other party, which, not having been involved in the proceedings which led to those decisions, was not in a position to submit observations on the probative value and relevance of the evidence adduced in those proceedings.
54      First, where an opponent wishes to rely on, as evidence of the reputation of an earlier mark, a previous decision of the adjudicating bodies of EUIPO which found that that mark had a reputation, it must rely on that decision in a precise manner, which means in particular that it must set out the essential content of that decision.
55      Secondly, the adjudicating body of EUIPO before which such a previous decision is thus relied on may have to use its powers under Article 63(2) and Article 78 of Regulation No 207/2009 in order to require the opponent to file the evidence which was considered in the proceedings which led to that previous decision whenever the production of such evidence is required. That production may be requested not only to enable that body to fulfil the obligation to examine and to state reasons which is imposed on it, in such a situation, by the principle of sound administration, but also to enable it to ensure compliance, vis-à-vis the other party, with the principle of the right to be heard and the principle of equality of arms between the parties in inter partes proceedings.
56      In the second place, EUIPO’s argument, according to which the obligation for the adjudicating bodies of EUIPO to take into account previous decisions which found that the same mark as that relied on in support of the opposition before them enjoyed a reputation would mean that a Board of Appeal could be forced to decide in the same way as the Opposition Division in a previous decision, cannot be accepted. It also follows from the obligation to examine and to state reasons, arising from the principle of sound administration, that the adjudicating body of EUIPO before which a previous decision is duly relied on must not only take that decision into account but must also consider whether or not it is appropriate to decide in the same way.
57      In the third and last place, EUIPO erred in arguing in the observations submitted following the measure of organisation of procedure of 6 July 2018 that, in the present case, the Board of Appeal had satisfied the obligation to examine and to state reasons arising from the principle of sound administration because it had decided to adjudicate differently than in the previous decisions relied on by the applicant and had stated reasons for that decision, in paragraph 24 of the contested decision, through the finding that the report of the survey carried out in France, which forms Annex 1 to the notice of opposition, could not be taken into consideration in the opposition proceedings in question, as the key part of that report had not been translated. The Board of Appeal thus departed from the previous decisions relied on by the applicant, since that report had been accepted by the adjudicating bodies of EUIPO which made those previous decisions and was, according to the applicant, a determining factor in establishing the reputation of the earlier marks in the proceedings which led to those decisions.
58      First of all, contrary to what is contended by EUIPO, the statements in paragraph 24 of the contested decision cannot be considered, in the context of that decision, to be the reasons given by the Board of Appeal for its decision to depart from the previous decisions, relied on by the applicant, in which it was found that certain trade marks on which the opposition was based enjoyed a reputation. First, the Board of Appeal’s decision not to take those previous decisions into account is based solely on the consideration that EUIPO’s previous decision-making practice is irrelevant, as was stated in paragraph 48 above. Secondly, the statements in paragraph 24 of the contested decision relate solely to the admissibility of the untranslated part of the report of the survey, forming Annex 1 to the notice of opposition, in the light of an exception relating to evidence or parts of the evidence which are self-evident, relied on by the applicant, without the slightest suggestion of the report being of particular importance in the previous decisions relied on by the applicant whereas the bodies giving those decisions should have disregarded that evidence.
59      Next, it should be noted that it follows from passages from two of the three previous decisions relied on by the applicant in the opposition proceedings, reproduced in the notice of opposition and the statement of grounds of appeal, that those two decisions were based on extensive evidence, so that the report of the survey carried out in France, forming Annex 1 to the notice of opposition, was only one of the items of evidence on which those decisions were based.
60      Lastly, it should be noted that the requirement to translate evidence drawn up in a different language to the language of the proceedings, laid down by Rule 19(3) of Regulation No 2868/95, is justified by the necessity to observe the principle of the right to be heard and to ensure equality of arms between the parties in inter partes proceedings (see, to that effect, judgment of 6 November 2007, SAEME v OHIM — Racke (REVIAN’s), T‑407/05, EU:T:2007:329, paragraph 35 and the case-law cited) and that it is not inconceivable that the actual and specific circumstances may lead the adjudicating bodies of EUIPO to consider that the filing of a document, although drawn up in a different language to that of the case, is not such as to affect adversely the other party’s rights of defence (see, to that effect, judgment of 10 May 2012, Rubinstein and L’Oréal v OHIM, C‑100/11 P, EU:C:2012:285, paragraphs 102 and 103).
61      Therefore, no indication as to the relevance of the previous decisions relied on by the applicant can be inferred in abstracto from the fact that the report of the survey, forming Annex 1 to the notice of opposition in the opposition proceedings in question, was taken into consideration by the adjudicating bodies of EUIPO which made those previous decisions.
62      It follows from all the foregoing considerations that the action is manifestly well founded in so far as the applicant criticises the Board of Appeal, first, for failing to take into account the previous decisions of the adjudicating bodies of EUIPO which were duly relied on before it and, secondly, for excluding as inadmissible because of its submission out of time, for which no reasons were given, the evidence annexed to the statement setting out the grounds of appeal.
63      Accordingly, it is necessary to uphold the first complaint of the second plea and the second complaint of the first plea and, consequently, to annul the contested decision, without it being necessary to examine the other complaints raised by the applicant, which are not capable of resulting in the annulment of that decision to any greater extent.
Costs
64      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since EUIPO has been unsuccessful, it must be ordered to pay the applicant’s costs, in accordance with the form of order sought by the applicant, as CMS is not a party to these proceedings.
On those grounds,
THE GENERAL COURT (First Chamber),
hereby orders:
1.      The decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 January 2016 (Case R 229/2015-2) is annulled.
2.      EUIPO shall pay the costs, including those incurred by Puma SE.
Luxembourg, 22 May 2019.
E. Coulon
I. Pelikánová
Registrar
President
*      Language of the case: English.
1 This order is the subject of a publication by extracts.