OPINION OF ADVOCATE GENERAL

WATHELET

delivered on 25 January 2018 ( 1 )

Case C‑564/16 P

European Union Intellectual Property Office (EUIPO)

v

Puma SE

(Appeal — European Union trade mark — Regulation (EC) No 207/2009 — Article 8(5) — Opposition proceedings — Relative grounds for refusal — Regulation (EC) No 2868/95 — Rules 19 and 50(1) — Concept of ‘reputation’ — Probative value of earlier EUIPO decisions recognising the reputation of an earlier trade mark — Concept of ‘previous decision-making practice’ — Obligation to state reasons — Procedural obligations of the Boards of Appeal of EUIPO)

I. Introduction

1. By its appeal, the European Union Intellectual Property Office (EUIPO) asks the Court to set aside the judgment of the General Court of the European Union of 9 September 2016, PUMA v EUIPO — Gemma Group (Representation of a bounding feline) (T‑159/15, EU:T:2016:457, ‘the judgment under appeal’), by which the latter annulled the decision of the Fifth Board of Appeal of EUIPO of 19 December 2014 (Case R 1207/2014-5) relating to opposition proceedings between Puma SE ( 2 ) and Gemma Group Srl ( 3 ) (‘the decision at issue’).

2. The question at the heart of the appeal may be of practical importance in the implementation of opposition proceedings brought on the basis of the ground laid down in Article 8(5) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark. ( 4 ) It involves determining whether the proprietor of a trade mark who gives notice of opposition on that basis against the registration of a new trade mark may justify his application simply by referring to the fact that the reputation of his trade mark had already been established in decisions of EUIPO which did not involve the same parties.

II. Legal context

A. Regulation No 207/2009

3. Under Article 8(5) of Regulation No 207/2009, ‘upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier [European Union] trade mark, the trade mark has a reputation in the [European Union] and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where 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 trade mark’.

4. Amongst the provisions of Title VII of Regulation No 207/2009, entitled ‘Appeals’, Article 63(2) reads as follows: ‘In the examination of the appeal, the Board of Appeal shall invite the parties, as often as necessary, to file observations, within a period to be fixed by the Board of Appeal, on communications from the other parties or issued by itself.’

5. Pursuant to Article 75 of Regulation No 207/2009, ‘decisions of the Office shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments’.

6. Article 76 of Regulation No 207/2009 provides: ‘1. In proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. 2. The Office may disregard facts or evidence which are not submitted in due time by the parties concerned.’

7. Lastly, in accordance with Article 78(1) of Regulation No 207/2009: ‘1. In any proceedings before the Office, the means of giving or obtaining evidence shall include the following: … (c) the production of documents and items of evidence; …’

B. Regulation (EC) No 2868/95

8. Under Rule 19(2) of Commission Regulation No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark: ( 5 ) ‘Within the period referred to in paragraph 1, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition. In particular, the opposing party shall provide the following evidence: (a) if the opposition is based on a trade mark which is not a Community trade mark, evidence of its filing or registration, by submitting: (i) if the trade mark is not yet registered, a copy of the relevant filing certificate or an equivalent document emanating from the administration with which the trade mark application was filed; (ii) if the trade mark is registered, a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered; (b) if the opposition is based on a well-known mark within the meaning of Article 8(2)(c) of the Regulation, evidence showing that this mark is well-known in the relevant territory; (c) if the opposition is based on a mark with reputation within the meaning of Article 8(5) of the Regulation, in addition to the evidence referred to in point (a) of this paragraph, evidence showing that the mark has a reputation, as well as evidence or arguments showing that 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 trade mark; …’

9. Rule 50(1) of Regulation No 2868/95 provides: ‘Unless otherwise provided, the provisions relating to proceedings before the department which has made the decision against which the appeal is brought shall be applicable to appeal proceedings mutatis mutandis. In particular, when the appeal is directed against a decision taken in opposition proceedings, Article 78a of the Regulation shall not be applicable to the time limits fixed pursuant to Article 61(2) of the Regulation. Where the appeal is directed against a decision of an Opposition Division, the Board shall limit its examination of the appeal to facts and evidence presented within the time limits set in or specified by the Opposition Division in accordance with the Regulation and these Rules, unless the Board considers that additional or supplementary facts and evidence should be taken into account pursuant to Article [76], paragraph 2, of … Regulation [No 207/2009].’

III. Background to the dispute

10. On 14 February 2013, Gemma Group filed an application for registration of a European Union trade mark with EUIPO pursuant to Regulation No 207/2009.

11. Registration as a trade mark was sought for the following figurative sign in blue:

12. The goods in respect of which registration was sought were in Class 7 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 corresponded to the following description: ‘Machines for processing of wood; machines for processing aluminium; machines for treatment of PVC’.

13. The European Union trade mark application was published in Community Trade Marks Bulletin No 66/2013 of 8 April 2013.

14. On 8 July 2013, the applicant, Puma, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the trade mark applied for in respect of all the goods referred to in paragraph 12 of this Opinion. The ground for the opposition was that set out in Article 8(5) of Regulation No 207/2009.

15. The opposition was based, inter alia, on the following earlier trade marks (‘the earlier trade marks’): – the international figurative mark represented below, which was registered on 30 September 1983 under the number 480105 and has been renewed until 2023, with effect in Benelux, the Czech Republic, France, Croatia, Italy, Hungary, Austria, Portugal, Romania, Slovenia and Slovakia and covering goods in Classes 18, 25 and 28 corresponding, for each of those classes, to the following description: – Class 18: ‘Bags to wear over the shoulder and travel bags, trunks and suitcases; especially for apparatus and sportswear’; – Class 25: ‘Clothing, boots, shoes and slippers’; – Class 28: ‘Games, toys; equipment for physical exercise, equipment for gymnastics and sports (not included in other classes), including sports balls’: – the international figurative mark reproduced below, which was registered on 17 June 1992 under the number 593987 and has been renewed until 2022, with effect in Benelux, Bulgaria, the Czech Republic, Estonia, Greece, Spain, France, Croatia, Italy, Cyprus, Latvia, Lithuania, Hungary, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland and the United Kingdom, covering, inter alia, the goods in Classes 18, 25 and 28 corresponding, for each of those classes, to the following description: – Class 18: ‘Leather goods or imitation leather goods included in this class; handbags and other cases that are not adapted to the goods which they are intended to contain, as well as small articles made from leather, particularly purses, pocket wallets and cases for keys; handbags, portfolios, storage and shopping bags, school bags, bags for campers, rucksacks, pouches, match bags, transport and storage bags, and travel bags made from leather and imitation leather, synthetic materials, base-metal alloys and textile fabrics; travelling sets (leatherware); shoulder belts (straps); animal skins; trunks and suitcases; umbrellas, parasols and walking sticks; whips, saddlery’; – Class 25: ‘Clothing, footwear, headgear; parts and components of footwear, soles, false soles and corrective soles, heels, boot uppers; non-slipping devices for boots, studs and spikes; ready-made interlining and pockets for clothes; corsetry items; boots, slippers and mules; finished items of footwear, street shoes, sports shoes, leisure footwear, shoes for physical training, running shoes, gymnastic, bathing and physiological slippers included in this class, tennis shoes; gaiters and spats, gaiters and spats of leather, leggings, puttees, spats for shoes; clothes for physical training, trunks and jerseys for gymnastics, trunks and jerseys for football, shirts and shorts for tennis, swimwear and beach clothing, swimming pants and underpants and swimming costumes, included two-piece swimwear, clothing for sports and leisure, including knitwear and jerseys, as well as for physical training, jogging, endurance running and gymnastics, trunks and trousers for sports, jerseys, jumpers, tee-shirts, sweat-shirts, clothing for tennis and skiing; tracksuits and leisure clothing, all-weather tracksuits and clothing, stockings (hosiery), football socks, gloves, including leather gloves, as well as imitation or synthetic leather, hats and caps, hair bands, head bands and sweat bands, scarves, shawls, headscarves, mufflers; belts, anoraks and parkas, raincoats, overcoats, overalls, jackets, skirts, breeches and trousers, pullovers and matching combinations composed of several items of clothing and underclothing; underclothing’; – Class 28: ‘Games, toys, including miniature footwear and miniature balls (used as toys); apparatus and gear for physical training, gymnastics and sport included in this class; equipment for skiing, tennis and fishing; skis, ski bindings and ski poles; edges of skis and coverings for skis; balls for games and play balloons, including balls and balloons for sports and games; dumb-bells, shots, discuses, javelins; tennis rackets, bats for table tennis or ping-pong, badminton and squash, cricket bats, golf clubs and hockey sticks; tennis balls and tennis ball throwing apparatus; roller skates and skates, combination shoes for roller-skating, also with reinforced soles; tables for table tennis; clubs for gymnastics, barrel hoops for sports, nets for sports, goal nets and ball nets; sports gloves (games accessories); dolls, dolls clothes, dolls shoes, caps and bonnets for dolls, belts for dolls, aprons for dolls; knee-pads, elbow-pads, ankle-protectors and leggings for sports; decorations for Christmas trees’:

16. In support of its opposition based on Article 8(5) of Regulation No 207/2009, Puma relied on the reputation of the earlier trade marks in all the Member States and for all the goods listed in paragraph 15 of this Opinion.

17. On 10 March 2014, the Opposition Division rejected the opposition in its entirety. Whilst finding there to be a certain degree of similarity between the signs at issue, it took the view — with regard to the reputation of earlier trade mark No 593987 — that, for reasons of procedural economy, it was not necessary to examine the evidence which the applicant had filed in order to prove the extensive use and reputation of that trade mark and that the examination would be carried out on the assumption that the earlier trade mark had ‘enhanced distinctiveness’. On the basis of that premiss, it concluded that the link required by Article 8(5) of Regulation No 207/2009 was not established in the present case.

18. On 7 May 2014, the applicant filed a notice of appeal against that decision with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009.

19. At the end of the decision at issue, the Fifth Board of Appeal of EUIPO dismissed the appeal.

20. First, it found that there was a certain degree of visual similarity between the earlier trade marks and the trade mark applied for and that they conveyed the same concept of a ‘pouncing feline recalling a puma’.

21. Secondly, the Board of Appeal rejected the applicant’s argument that the Opposition Division had confirmed that the earlier trade marks had a reputation, on the ground that the Opposition Division had, in fact, limited itself to stating that, for reasons of procedural economy, the evidence of reputation filed by the applicant did not have to be assessed in the present case and that the examination would proceed on the assumption that earlier trade mark No 593987 had ‘enhanced distinctiveness’. The Board of Appeal also examined and rejected the evidence of the reputation of the earlier trade marks regarding the goods referred to in paragraph 15 of this Opinion.

22. Thirdly, the Board of Appeal found that, even assuming that the reputation of the earlier trade marks should have been regarded as proven, the opposition based on Article 8(5) of Regulation No 207/2009 would have to fail because the other conditions, namely the existence of an unfair advantage taken of the distinctive character or the repute of the earlier trade marks or of detriment to their distinctive character or repute, had not also been satisfied.

IV. The procedure before the General Court and the judgment under appeal

23. By application lodged at the General Court Registry on 1 April 2015, Puma brought an action for the annulment of the decision at issue.

24. In support of its action, Puma put forward, in essence, three pleas in law, alleging (i) infringement of the principles of legal certainty and sound administration inasmuch as the Board of Appeal had rejected the evidence relating to the reputation of the earlier trade marks and found that their reputation had not been proved, (ii) infringement of Articles 75 and 76 of Regulation No 207/2009 inasmuch as the Board of Appeal had examined the evidence relating to the reputation of the earlier trade marks although the Opposition Division had not carried out such an examination, and (iii) infringement of Article 8(5) of that regulation.

25. By its first plea, Puma submitted, in essence, that, by rejecting the applicant’s evidence relating to the reputation of the earlier trade marks and by departing from its decision-making practice relating to the reputation of the earlier trade marks, the Board of Appeal had infringed the principles of legal certainty and sound administration. In support of that plea, the applicant put forward two arguments before the General Court: the first argument concerned the Board of Appeal’s refusal to take into consideration the evidence which had not been translated into the language of the proceedings, the second argument related to the Board of Appeal’s alleged departure from its previous decision-making practice.

26. Having found certain images submitted by Puma to be inadmissible because they were produced for the first time before it, the General Court examined the two arguments relied on by Puma in the context of its first plea. It restated the content of the right to good administration, which includes, inter alia, the obligation of the administration to give reasons for its decision, observing that the purpose of that obligation to state reasons is twofold: first, to enable the persons concerned to ascertain the reasons for the measure in order to defend their rights and, secondly, to enable the Courts of the European Union to exercise their power to review the legality of the decision.

27. The General Court pointed out that, in its case-law on the principles of equal treatment and sound administration, inter alia in its judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM (C‑51/10 P, EU:C:2011:139), the Court of Justice clarified that, when examining an application for registration of a European Union trade mark, EUIPO had to take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not; however, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. The General Court went on to observe that, consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application should be stringent and full, in order to prevent trade marks from being improperly registered. That examination should be undertaken in each individual case, since the registration of a sign as a trade mark would depend on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal.

28. The General Court rejected Puma’s first argument, advanced in support of its first plea, finding that — pursuant to Rule 19 of Regulation No 2868/95 — the Board of Appeal was correct in taking the view that the evidence which had not been submitted in the language of the proceedings could not be taken into consideration.

29. As regards Puma’s second argument, namely its submission that the Board of Appeal erred in law by departing from the decision-making practice of EUIPO and the case-law of the General Court, the General Court pointed first of all to the content of three recent EUIPO decisions, in which EUIPO concluded that the earlier trade marks had a reputation; in that connection, the General Court likewise referred to the evidence submitted by Puma in those proceedings in support of the reputation of its earlier trade marks. Next, in paragraph 31 of the judgment under appeal, the General Court took the view that those decisions had been duly relied on by Puma in the course of the procedure before the Board of Appeal, but that the Board of Appeal had not examined or even mentioned them in the decision at issue, with that board merely stating that EUIPO was not bound by its previous decision-making practice. In addition, the General Court pointed out that EUIPO’s conclusions in those three decisions were borne out by a number of decisions of national offices put forward by Puma.

30. Thus, the General Court took the view, first, that the earlier trade marks had been found to have a reputation by EUIPO in three recent decisions and, second, that the finding that a trade mark has a reputation is a finding of a factual nature which does not depend on the trade mark applied for.

31. In paragraph 34 of the judgment under appeal, the General Court concluded from the foregoing that, ‘in light of the case-law …, according to which EUIPO must take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, and in the light of its obligation to state reasons, 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 marks, which were made in those decisions, would not, or would no longer, be relevant. The Board of Appeal in no way states that that reputation has become weaker since the abovementioned recent decisions were made or that that decision-making practice may be unlawful’.

32. In that regard, the General Court dismissed EUIPO’s argument that those decisions should not be taken into account on the ground that none of them was accompanied by evidence of the earlier trade marks’ reputation which had been submitted in the context of those proceedings, explaining that the Board of Appeal enjoys, when examining an appeal directed against a decision, the discretion under the third subparagraph of Rule 50(1) of Regulation No 2868/95 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.

33. In the light of the circumstances of the present case, the General Court stated, in paragraphs 37 and 38 of the judgment under appeal, that, ‘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 either 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, or provided the reasons why it took the view that the findings made in those previous decisions as regards the reputation of the earlier marks had to be discounted in the present case. That was particularly necessary because some of those decisions referred in a very detailed manner to the evidence on which the assessment of the reputation of the earlier marks in those decisions was based, which should have drawn the Board of Appeal’s attention to the existence of that evidence’. The General Court thus upheld Puma’s first plea in law, finding that EUIPO had infringed the principle of sound administration, in particular its obligation to state the reasons on which its decisions are based.

34. The General Court further found that, since the strength of the earlier trade marks’ reputation is taken into account in the overall assessment of whether there is harm for the purposes of Article 8(5) of Regulation No 207/2009, a matter upon which the Board of Appeal ruled for the sake of completeness in the decision at issue, the Board of Appeal’s error of law might have had a decisive influence on the outcome of the opposition. However, since the Board of Appeal had not carried out a full examination of the reputation of the earlier trade marks, the General Court took the view that it was not in a position to rule on the alleged infringement of Article 8(5) of Regulation No 207/2009.

35. Accordingly, in paragraph 44 of the judgment under appeal, the General Court upheld Puma’s first plea and annulled the decision at issue in so far as it rejected the applicant’s opposition, without examining the other pleas in law put forward by the applicant.

V. Forms of order sought by the parties and the procedure before the Court

36. By its appeal, EUIPO claims that the Court should set aside the judgment under appeal and order Puma to bear the costs incurred by EUIPO. Puma contends that the Court should dismiss the appeal and order EUIPO to pay the costs incurred.

37. The parties submitted written pleadings and presented oral argument at the hearing on 14 December 2017.

VI. The appeal

38. In support of its appeal, EUIPO relies on two grounds of appeal. The first ground of appeal alleges infringement of 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. The second ground of appeal alleges infringement of Rule 50(1) of Regulation No 2868/95 and Article 76(2) of Regulation No 207/2009.

39. It expands upon those two grounds of appeal using four arguments that it details by means of three points. Although this is not the clearest of approaches, the disputed points are, however, stated with due precision. On the basis of those complaints, the first ground of appeal can be broken down into three parts.

40. First, in paragraph 31 of the judgment under appeal, the General Court disregarded EUIPO’s procedural position and obligations in inter partes proceedings by finding that three previous EUIPO decisions had been ‘duly relied on’ by Puma for the purposes of showing the reputation of the Puma trade marks, as required by Rule 19(2)(c) of Regulation No 2868/95.

41. Second, in paragraph 34 of the judgment under appeal, the General Court misconceived the adversarial nature of the inter partes proceedings and the concept of ‘reputation’ within the meaning of Article 8(5) of Regulation No 207/2009 by qualifying EUIPO’s previous decisions as a ‘decision-making practice’. It erred in law by requiring the Board of Appeal of EUIPO to explain why it had failed to take account of the findings made by it in the earlier decisions relating to the reputation of the Puma trade marks.

42. Third, in paragraph 37 of the judgment under appeal, the General Court could not find that the Board of Appeal of EUIPO was under the subsidiary obligation to invite, of its own motion, Puma to submit supplementary evidence of the reputation which it claimed. In so doing, the General Court infringed the adversarial principle governing inter partes proceedings laid down in Article 76(1) of Regulation No 207/2009 and the principle of sound administration. This third part echoes the complaint made in the context of the second ground of appeal based on Article 76(2) of Regulation No 207/2009, which is applicable pursuant to Rule 50(1) of Regulation No 2868/95. I will therefore examine those aspects of the appeal jointly when I turn to the second ground of appeal.

A. The first two parts of the first ground of appeal, alleging infringement of 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

43. I will examine the first two parts of the first ground of appeal together since they both concern, in essence, the impact of a decision-making practice of EUIPO on the proof of a trade mark’s reputation.

44. It is important to observe, as a preliminary point, that EUIPO disputes not the possibility of an opposing party’s referring to EUIPO’s previous decision-making practice but the fact that a previous decision may be taken into account without the opposing party making — in addition to the reference to that decision — specific and accurate references to documents submitted in the proceedings which led to that decision and do so in the language of the new proceedings. ( 6 )

45. If that view were to be accepted, that would amount to denying the probative value of the findings made in the previous decision and, as a result, to stripping the case-law on previous decision-making practice of its relevance to a great extent, since the opposing party would be unable to dispense with identifying evidence previously submitted and demonstrating its relevance for the new opposition proceedings.

46. However, the nature of the ‘reputation’ of an earlier trade mark within the meaning of Article 8(5) of Regulation No 207/2009 is perfectly compatible with the obligation on EUIPO to take account of its previous decision-making practice, as the Court has held in relation to other grounds for refusal of registration, whether absolute ( 7 ) or relative. ( 8 )

47. I see no reason why the principle of equal treatment and the principle of sound administration, which form the basis of the Court’s case-law on EUIPO’s obligation to ‘take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not’, ( 9 ) would not apply when implementing Article 8(5) of Regulation No 207/2009.

1. The nature of ‘reputation’

48. First of all, 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 trade mark, within a substantial part of the territory of the European Union. ( 10 )

49. It is therefore a finding of fact: ‘reputation’ is a reality. ( 11 ) Furthermore, the Court of Justice has indeed already, albeit implicitly, accepted that fact by holding, in the context of an appeal, that the finding that an earlier trade mark had acquired a reputation formed part of the assessment of the facts by the General Court. ( 12 )

50. I therefore concur with the General Court’s assessment in paragraph 33 of the judgment under appeal that the finding that the earlier trade marks relied on by Puma have a reputation is a finding of a factual nature which does not depend on the trade mark applied for in the registration proceedings at issue.

51. If it is apparent that EUIPO has already had occasion, in the course of previous proceedings, to find that a particular trade mark has a reputation for the purposes of Article 8(5) of Regulation No 207/2009, that finding must be regarded as a finding of fact. In addition, the evidence accepted by EUIPO as the basis of that finding must, in principle, appear in the statement of reasons on which the previous decision is based. After all, ‘the obligation for EUIPO to state reasons for its decisions in accordance with Article 75, first sentence, of Regulation No 207/2009 has the same scope as that which derives from Article 296, second paragraph, 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 in such a way as to enable the persons concerned to ascertain the reasons for the measure and to enable the competent court to exercise its power of review …’. ( 13 ) In order to satisfy that requirement, the evidence providing proof of an earlier trade mark’s reputation adduced by the proprietor of that trade mark must, necessarily, to a more or less explicit degree, appear in the EUIPO decision which acknowledges that reality. Such evidence is therefore no longer crucial in the context of subsequent opposition proceedings, since the previous EUIPO decision relies on it in support of its finding. That decision is sufficient in itself.

52. The General Court did not therefore err in law in accepting, in paragraphs 30 and 31 of the judgment under appeal, the reference made by Puma in its notice of opposition to three previous EUIPO decisions as valid references not only as regards the finding made at the end of those proceedings that the earlier trade marks have a reputation but also in relation to the evidence submitted by Puma in the context of those proceedings.

2. The impact of inter partes proceedings on the account taken of a previous decision-making practice

53. Next, contrary to EUIPO’s submission in support of its first ground of appeal, the account taken of a previous decision-making practice relating to the reputation enjoyed by a trade mark is not contrary to the adversarial nature of the opposition proceedings; nor does it preclude the specificity of the finding made in the particular opposition proceedings in question. ( 14 )

54. The Court has taken care to make EUIPO’s obligation to take account of its previous decision-making practice subject to two points. First, ‘the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality’. ( 15 ) Second, ‘for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered … That examination must be undertaken in each individual case.’ ( 16 )

55. In accordance with those principles, in the same way that a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else, ( 17 ) a person who opposes the registration of a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed previously.

56. Accordingly, although a decision-making practice of EUIPO relating to the reputation of a trade mark may be relied on by the proprietor of that trade mark in support of its opposition, the trade mark applicant may, for his part, challenge it or criticise its relevance to the case at issue. The ability to rely on a previous decision-making practice does not strip the trade mark applicant of the right to challenge the evidence adduced in support of the opposition.

57. In any event, regardless of whether or not there is any debate between the parties, it will be for EUIPO to take into account the decision(s) relied on, consider with especial care whether it should decide in the same way or not and state the reasons on which its decision is based accordingly, no more no less.

58. In reality, this involves simply performing the obligation to state reasons incumbent on EUIPO pursuant to Article 75 of Regulation No 207/2009. In addition, even though EUIPO does not have to go into all the relevant facts and points of law, its statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by it in such a way as to enable the persons concerned to ascertain the reasons for the measure and to enable the competent court to exercise its power of review. ( 18 ) Thus, where the facts and the legal considerations having decisive importance in the context of the decision at issue are sufficiently set out, EUIPO is not required to give specific reasons in order to justify its decision relating to earlier decisions relied on by one of the parties to the proceedings. ( 19 )

59. The General Court therefore did not err in law when it held, in paragraph 34 of the judgment under appeal, that 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 those decisions, was not, or was no longer, relevant.

60. In the light of the foregoing, the view must be taken that the arguments relied on in the first two parts of the first ground of appeal are unfounded.

B. The third part of the first ground of appeal, alleging infringement of Article 76(1) of Regulation No 207/2009 and the principle of sound administration, and the second ground of appeal, alleging infringement of Rule 50(1) of Regulation No 2868/95 in conjunction with Article 76(2) of Regulation No 207/2009

61. The third part of the first ground of appeal and the second ground of appeal raised by EUIPO in support of its appeal both concern paragraph 37 of the judgment under appeal, in which the General Court ruled, in essence, that, if the Board of Appeal of EUIPO did not provide the reasons why it took the view that the findings made in its previous decisions had to be discounted, ‘[it] should, in accordance with the principle of sound administration …, have … requested that [Puma] submit supplementary evidence of the reputation of the earlier marks’.

62. In EUIPO’s view, by laying down that ‘subsidiary’ obligation, the General Court infringed the adversarial principle governing inter partes proceedings laid down in Article 76(1) of Regulation No 207/2009 and the principle of sound administration. It ‘incidentally’ also infringed ‘Article 76(2) of Regulation No 207/2009, applicable in the present case by virtue of Rule 50(1) of Regulation No 2868/95’. ( 20 )

63. It is true that the distinction made in Article 76(1) of Regulation No 207/2009 cannot be ignored. Although that provision states that EUIPO is to examine the facts of its own motion, it does, however, clarify that, in proceedings relating to relative grounds for refusal of registration — such as that laid down in Article 8(5) of Regulation No 207/2009 –, EUIPO is to be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. Article 76(2) of Regulation No 207/2009 adds that EUIPO ‘may disregard facts or evidence which are not submitted in due time by the parties concerned’. ( 21 )

64. On the basis of Article 76(2) of Regulation No 207/2009, the third subparagraph of Rule 50(1) of Regulation No 2868/95 states that, where an appeal is directed against a decision of an Opposition Division, the Board ‘shall limit its examination of the appeal to facts and evidence presented within the time limits set in or specified by the Opposition Division …, unless the Board considers that additional or supplementary facts and evidence should be taken into account pursuant to Article [76](2) of Regulation [No 207/2009]’.

65. According to the Court, ‘the submission of facts and evidence by the parties [therefore] remains possible after the expiry of the time limits to which such submission is subject under the provisions of Regulation [No 207/2009] and … [EUIPO] is in no way prohibited from taking account of facts and evidence which are submitted or produced late’. ( 22 ) In other words, those various provisions grant the Boards of Appeal of EUIPO the power 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, ( 23 ) provided, however, that evidence had previously been produced within the time limit set by EUIPO. ( 24 )

66. It is therefore a right afforded to EUIPO and not an obligation: the parties ‘[do] not enjoy an unconditional right to have [the facts and evidence submitted and produced outside the time limits set] taken into account by the Board of Appeal [of EUIPO]. On the contrary, that board has a discretion as to whether or not to take such information into account when making the decision which it is called upon to give’. ( 25 )

67. Contrary to the reading of the judgment under appeal suggested by EUIPO, the General Court did not, in my view, turn the right afforded to EUIPO by Article 76 of Regulation No 207/2009 and Rule 50(1) of Regulation No 2868/95 to take into account evidence which the parties failed to produce in due time into an obligation to request such evidence. The obligation set out by the General Court in paragraph 37 of the judgment under appeal is based not on the provisions cited above but on the principle of sound administration and, more specifically, on the obligation to state reasons which that principle includes. ( 26 )

68. Although the General Court refers to the third subparagraph of Rule 50(1) of Regulation No 2868/95, it does so solely in so far as that provision ‘allows’ supplementary evidence to be requested. I do not consider the General Court’s finding in this regard to be vitiated by an error in law.

69. The third subparagraph of Rule 50(1) of Regulation No 2868/95 expressly authorises the Board of Appeal of EUIPO to take into account additional or supplementary facts and evidence which were not produced in due time. Article 63(2) of Regulation No 207/2009 allows the Board of Appeal of EUIPO to invite the parties, ‘as often as necessary, to file observations, within a period to be fixed by the Board of Appeal, on communications … issued by itself’. ( 27 ) Moreover, Article 78(1)(c) of Regulation No 207/2009 envisages the possibility of requesting the production of documents and items of evidence ‘in any proceedings before [EUIPO]’.

70. In those circumstances, in the light of the requirement to state reasons to which EUIPO is subject pursuant to the principle of sound administration and which is expressly laid down in Article 75 of Regulation No 207/2009, the General Court did not err in law where it found that the Board of Appeal of EUIPO ‘should, in accordance with the principle of sound administration’, have requested that the proprietor of the earlier trade marks submit supplementary evidence of their reputation if that were necessary in order for findings made in previous decisions to be discounted, and provided an adequate statement of reasons for its decision. This is simply a case of use being made of the possibility provided for in Article 63(2) of Regulation No 207/2009.

71. In addition, the rule laid down by the General Court also ensures compliance with the adversarial principle, since Article 75 of Regulation No 207/2009 prohibits EUIPO from basing its decisions on reasons or evidence on which the parties concerned have had no opportunity to present their comments. When requesting that the opposing party produce supplementary evidence, EUIPO must give the applicant the opportunity to comment on that evidence.

72. In the light of the foregoing, the view must be taken that the arguments advanced in the context of the third part of the first ground of appeal and in the second ground of appeal are unfounded. The two grounds of appeal should therefore be dismissed in their entirety.

73. In the alternative, if the Court of Justice were to regard the finding made in paragraph 37 of the judgment under appeal to be an error in law inasmuch as the General Court referred to the third subparagraph of Rule 50(1) of Regulation No 2868/95, the principle of sound administration, read in conjunction with Article 63(2) and Article 78(1)(c) of Regulation No 207/2009, appears to me in any event to provide sufficient justification for the operative part of the judgment under appeal. In these circumstances, the General Court’s error cannot constitute sufficient grounds for the judgment under appeal to be set aside. ( 28 )

74. In the light of the foregoing, since the judgment under appeal cannot be set aside on the basis of the first two parts of the first ground of appeal advanced by EUIPO in support of its appeal, the appeal as a whole should likewise be dismissed.

VII. Costs

75. Under Article 138(1) of the Rules of Procedure of the Court of Justice, which is applicable to the procedure on an appeal pursuant to 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. Since Puma has applied for costs and EUIPO has been unsuccessful, the latter must be ordered to pay the costs.

VIII. Conclusion

76. In the light of the foregoing considerations, I propose that the Court should: – dismiss the appeal; and – order EUIPO to pay the costs.

( 1 ) Original language: French.

( 2 ) ‘Puma’.

( 3 ) ‘Gemma Group’.

( 4 ) OJ 2009 L 78, p. 1.

( 5 ) OJ 1995 L 303, p. 1, as amended by Commission Regulation (EC) No 1041/2005 of 29 June 2005 (OJ 2005 L 172, p. 4).

( 6 ) See paragraph 29 of the appeal.

( 7 ) See, with regard to Article 7(1)(c) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM (C‑51/10 P, EU:C:2011:139, paragraphs 73 to 77).

( 8 ) See, for example, in relation to the assessment of the genuine use made of an earlier trade mark, judgment of 17 July 2014, Reber Holding v OHIM (C‑141/13 P, not published, EU:C:2014:2089, paragraphs 45 and 46).

( 9 ) Judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM (C‑51/10 P, EU:C:2011:139, paragraphs 73 and 74). See also judgment of 17 July 2014, Reber Holding v OHIM (C‑141/13 P, not published, EU:C:2014:2089, paragraph 45), and orders of 12 December 2013, Getty Images (US) v OHIM (C‑70/13 P, not published, EU:C:2013:875, paragraphs 41 and 42) and of 11 September 2014, Think Schuhwerk v OHIM (C‑521/13 P, EU:C:2014:2222, paragraph 57).

( 10 ) See, to that effect, judgment of 3 September 2015, Iron & Smith (C‑125/14, EU:C:2015:539, paragraph 17). See also judgments of 14 September 1999, General Motors (C‑375/97, EU:C:1999:408) and of 6 October 2009, PAGO International (C‑301/07, EU:C:2009:611, paragraph 30). In paragraph 16 of its judgment of 3 September 2015, Iron & Smith (C‑125/14, EU:C:2015:539), the Court expressly acknowledged that the expression ‘has a reputation in the [European Union]’ had the same meaning in the European Union Trade Mark Regulation (both Regulation No 207/2009 and Regulation No 40/94) and in the Directive to approximate the laws of the Member States relating to trade marks (here: Directive 2008/95/EC of the European Union and of the Council of 22 October 2008 (OJ 2008 L 299, p. 25)). In legal literature, Azéma, J., ‘Marques renommées et marques notoires en droit européen et en droit français’, Marques renommées et marques notoires — Well-known and Famous Trade Marks, L.G.D.J.-Schulten, 2011, pp. 23 to 36, particularly p. 27.

( 11 ) See Sancho Gargallo, I., ‘Alance de la protección de la marca notoria en la jurisprudencia comunitaria’, in Morral Soldevila, R. (ed.), Problemas actuales de derecho de la propriedad industrial, Thomson Reuters-Civitas, 2011, pp. 141 to 155, particularly p. 141.

( 12 ) See, to that effect, judgment of 21 January 2016, Hesse v OHIM (C‑50/15 P, EU:C:2016:34, paragraph 29).

( 13 ) Order of 14 April 2016, KS Sports v EUIPO (C‑480/15 P, not published, EU:C:2016:266, paragraph 32). In that order, the Court summarises in a single paragraph its earlier findings in relation to the similar provisions of Regulation No 40/94 and the EC Treaty in its judgment of 21 October 2004, KWS Saat v OHIM (C‑447/02 P, EU:C:2004:649, paragraphs 63 to 65).

( 14 ) See paragraphs 22 and 51 to 53 of the appeal.

( 15 ) Judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM (C‑51/10 P, EU:C:2011:139, paragraph 75). See also judgment of 17 July 2014, Reber Holding v OHIM (C‑141/13 P, not published, EU:C:2014:2089, paragraph 45), and orders of 12 December 2013, Getty Images (US) v OHIM (C‑70/13 P, not published, EU:C:2013:875, paragraph 43) and of 11 September 2014, Think Schuhwerk v OHIM (C‑521/13 P, EU:C:2014:2222, paragraph 57).

( 16 ) Judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM (C‑51/10 P, EU:C:2011:139, paragraph 77), emphasis added. See also orders of 12 December 2013, Getty Images (US) v OHIM (C‑70/13 P, not published, EU:C:2013:875, paragraph 44); of 11 September 2014, Think Schuhwerk v OHIM (C‑521/13 P, EU:C:2014:2222, paragraph 57); and of 14 April 2016, KS Sports v EUIPO (C‑480/15 P, not published, EU:C:2016:266, paragraph 37).

( 17 ) See, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM (C‑51/10 P, EU:C:2011:139, paragraph 76); order of 12 December 2013, Getty Images (US) v OHIM (C‑70/13 P, not published, EU:C:2013:875, paragraph 43).

( 18 ) See, to that effect, judgment of 17 March 2016, Naazneen Investments v OHIM (C‑252/15 P, not published, EU:C:2016:178, paragraphs 28 and 29), and order of 14 April 2016, KS Sports v EUIPO (C‑480/15 P, not published, EU:C:2016:266, paragraph 32 and the case-law cited).

( 19 ) See, to that effect, order of 14 April 2016, KS Sports v EUIPO (C‑480/15 P, not published, EU:C:2016:266, paragraph 38).

( 20 ) Paragraph 65 of the appeal.

( 21 ) Emphasis added.

( 22 ) Judgment of 13 March 2007, OHIM v Kaul (C‑29/05 P, EU:C:2007:162, paragraph 42); emphasis added.

( 23 ) See, to that effect, judgment of 3 October 2013, Rintisch v OHIM (C‑120/12 P, EU:C:2013:638, paragraph 32).

( 24 ) See, to that effect, judgment of 21 July 2016, EUIPO v Grau Ferrer (C‑597/14 P, EU:C:2016:579, paragraphs 25 to 27).

( 25 ) Judgment of 13 March 2007, OHIM v Kaul (C‑29/05 P, EU:C:2007:162, paragraph 63). See also judgment of 18 December 2008, Les éditions Albert René (C‑16/06 P, EU:C:2008:739, paragraph 142).

( 26 ) The General Court makes reference here to paragraphs 18 and 20 of the judgment under appeal, which expressly refer to Article 41(2) of the Charter of Fundamental Rights and the obligation to give reasons for decisions laid down therein.

( 27 ) Emphasis added.

( 28 ) See, to that effect, judgment of 21 July 2016, EUIPO v Grau Ferrer (C‑597/14 P, EU:C:2016:579, paragraph 29).