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 Council Regulation No 207/2009 on the Community trade mark, Rule 19(1) and (2)(c) of Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark provides that the European Union Intellectual Property Office (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.

In accordance with the settled case-law of the Court of Justice, the European Union Intellectual Property Office (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.

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 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.

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 Regulation No 40/94 on the Community trade mark, the Court of Justice then expressly ruled that they also applied to opposition proceedings based on a relative ground for refusal.

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 on the European Union trade mark, 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.

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.

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 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.

(see paras 60, 61, 63-66)