European Union Intellectual Property Office v Puma SE.
Date: 2018-06-28
55


More particularly, with regard to the second condition relating to the existence of a mark’s reputation, the only one at issue in the present case, it is clear from the case-law of the Court of Justice that a mark has a reputation within the meaning of EU law where it is known by a significant part of the public concerned by the goods or services covered by that mark, within a substantial part of the territory of the European Union (see, to that effect, judgment of 3 September 2015, Iron & Smith, C‑125/14, EU:C:2015:539, paragraph 17 and the case-law cited).
56


The existence of repute must be assessed by taking into consideration all the relevant factors of the case, that is to say, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it (judgment of 14 September 1999, General Motors, C‑375/97, EU:C:1999:408, paragraph 27).
57


Although the issue whether the earlier marks acquired a reputation, for the purposes of Article 8(5) of Regulation No 207/2009, constitutes a finding which is part of the assessment of the facts by the General Court which cannot be the subject of an appeal, save where the facts and evidence submitted to the General Court are distorted (see, to that effect, judgment of 21 January 2016, Hesse v OHIM, C‑50/15 P, EU:C:2016:34, paragraph 29), the issue whether the evidence presented in support of the reputation was properly obtained and whether the general principles of law and the rules of procedure in relation to the burden of proof and the taking of evidence were observed constitutes a point of law which is subject to review by the Court of Justice (see, to that effect, judgment of 10 May 2012, Rubinstein and L'Oréal v OHIM, C‑100/11 P, EU:C:2012:285, paragraph 74).
58


As regards the burden of proof and the taking of evidence, where the proprietor of a mark wishes to rely on the ground for refusing registration referred to in Article 8(5) of Regulation No 207/2009, Rule 19(1) and (2)(c) of Regulation No 2868/95 provides that EUIPO must give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition, in particular evidence that the earlier mark has a reputation, or to complete any facts, evidence or arguments that have already been submitted. Since Regulation No 207/2009 and Regulation No 2868/95 do not list the forms of evidence which the opponent may present in order to demonstrate the existence of the earlier mark’s reputation, the opponent is free, in principle, to choose the form of evidence which it considers useful to submit to EUIPO in opposition proceedings based on an earlier right; EUIPO is obliged to examine the evidence submitted by the opponent, and cannot reject out of hand a type of evidence on the basis of its form (judgment of 19 April 2018, EUIPO v Group, C‑478/16 P, not published, EU:C:2018:268, paragraphs 56 to 59).
60


In addition, in accordance with the settled case-law of the Court of Justice, EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, including the principles of equal treatment and sound administration (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 73, and order of 11 April 2013, Asa v OHIM, C‑354/12 P, not published, EU:C:2013:238, paragraph 41).
61


The Court of Justice has stipulated that, having regard to those principles, EUIPO must take into account the decisions previously taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, since the way in which those principles are applied, as was recalled by the General Court in paragraph 20 of the judgment under appeal, must be consistent with respect for the principle of legality, which means that the examination of any trade mark application must be stringent and full, and must be undertaken in each individual case (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 74, 75 and 77, and of 17 July 2014, Reber Holding v OHIM, C‑141/13 P, not published, EU:C:2014:2089, paragraph 45; and order of 14 April 2016, KS Sports v EUIPO, C‑480/15 P, not published, EU:C:2016:266, paragraph 37).
63


Although it is true that those principles were established by the Court of Justice in a case concerning an absolute ground for refusal, that is to say the ground referred to in Article 7(1)(c) of Council Regulation No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), the Court of Justice then expressly ruled that they also applied to opposition proceedings based on a relative ground for refusal (see, to that effect, judgment of 17 July 2014, Reber Holding v OHIM, C‑141/13 P, not published, EU:C:2014:2089, paragraph 46; orders of 11 April 2013, Asa v OHIM,C‑354/12 P, not published, EU:C:2013:238, paragraph 42; of 15 October 2015, Cantina Broglie 1 v OHIM, C‑33/15 P, not published, EU:C:2015:705, paragraph 49; of 15 October 2015, Cantina Broglie 1 v OHIM, C‑34/15 P, not published, EU:C:2015:704, paragraph 49; and of 14 April 2016, KS Sports v EUIPO, C‑480/15 P, not published, EU:C:2016:266, paragraph 37).
64


The Court of Justice has also already explained, as the General Court pointed out in paragraphs 18 and 19 of the judgment under appeal, that the right to sound administration, in accordance with Article 41(2) of the Charter of Fundamental Rights of the European Union, includes the obligation of the administration to give reasons for its decisions. That obligation, which also stems from Article 75 of Regulation No 207/2009, has the dual purpose of enabling interested parties to know the purported justification for the measure taken so as to be able to defend their rights and of enabling the Courts of the European Union to exercise their jurisdiction to review the legality of the decision in question (see, to that effect, judgments of 10 May 2012, Rubinstein and L’Oréal v OHIM, C‑100/11 P, EU:C:2012:285, paragraph 111, and of 17 March 2016, Naazneen v OHIM, C‑252/15 P, EU:C:2016:178, paragraph 29).
65


Furthermore, that obligation has the same scope as that which derives from the second paragraph of Article 296 TFEU which requires that the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question, without it being necessary for that reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets those requirements must, nonetheless, be assessed with regard, not only to its wording, but also to its context and to all the legal rules governing the matter in question (see, to that effect, judgment of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraphs 63 to 65, and order of 14 April 2016, KS Sports v EUIPO, C‑480/15 P, not published, EU:C:2016:266, paragraph 32).
80


Contrary to what EUIPO claims, there was no error in law on the part of the General Court as regards its interpretation of those principles. In that regard, it is true that EUIPO’s bodies are not automatically bound by their previous decisions, given that, as the General Court rightly pointed out in paragraph 20 of the judgment under appeal, the examination of any trade mark application must be stringent and full in order to prevent trade marks from being improperly registered, so that the existence of reputation must be examined by taking into account the factual circumstances of each individual case (see, by analogy, order of 12 February 2009, Bild digital and ZVS, C‑39/08 and C‑43/08, not published, EU:C:2009:91, paragraph 17, and, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 77). It does not follow, however, that those bodies are relieved of the obligations set out in paragraph 66 above, arising from the principles of sound administration and equal treatment, including the obligation to state reasons.
91


In reply to that line of argument, the General Court, in paragraph 36 of the judgment under appeal, correctly referred to the case-law according to which Article 76(2) of Regulation No 207/2009 and the third subparagraph of Rule 50(1) of Regulation No 2868/95 grant EUIPO the discretion to decide whether or not to take into account additional or supplementary facts and evidence which were not presented within the time limits set or specified by the Opposition Division. In accordance with those provisions, when evidence is produced within the time limit set by EUIPO, as it is agreed to be in the present case, the production of supplementary evidence remains possible (see, to that effect, judgment of 21 July 2016, EUIPO v Grau Ferrer, C‑597/14 P, EU:C:2016:579, paragraph 26 and the case-law cited).
98


It must be recalled in that respect, as the Court of Justice has already held, that it follows from Article 63(2) of Regulation No 207/2009, read in conjunction with Article 78 of that regulation, that, for the purposes of the examination of the merits of the appeal brought before it, the Board of Appeal of EUIPO is not only to invite the parties, as often as necessary, to file, within time limits which it sets, observations on notifications which it has sent to them, but may also decide on measures of inquiry, including the production of facts or evidence. In turn, such provisions demonstrate the possibility of seeing the underlying facts of a dispute multiply at various stages of the proceedings before EUIPO (judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 58, and of 28 February 2018, mobile.de v EUIPO, C‑418/16 P, EU:C:2018:128, paragraph 57).