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 (‘the Board of Appeal’) of 19 December 2014 (Case R 1207/2014-5) relating to opposition proceedings between Puma SE and Gemma Group Srl (‘the decision at issue’).
2 Article 8 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), entitled ‘Relative grounds for refusal’, provides in paragraph 5: ‘Furthermore, 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 [EU] trade mark, the trade mark has a reputation in the [EU] 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.’
3 Article 63 of that regulation, which appears in Title VII entitled ‘Appeals’, provides in paragraph 2: ‘In the examination of the appeal, the Board of Appeal shall invite the parties as often as necessary to file observations within the period to be fixed by the Board of Appeal on communications from the other parties or issued by itself.’
4 Article 75 of the regulation provides: ‘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 on opportunity to present their comments.’
5 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.’
6 Article 78(1) of that regulation provides as follows: ‘In any proceedings before the Office, the means of giving or obtaining evidence shall include the following: (a) hearing the parties; (b) requests for information; (c) the production of documents and items of evidence; (d) hearing witnesses; (e) opinions by experts; (f) statements in writing sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up.’
7 Rule 19 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation No 40/94 on the Community trade mark (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) (‘Regulation No 2868/95’), entitled ‘Substantiation of the Opposition’, provides in paragraphs 1 and 2: ‘1. The Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of his opposition or to complete any facts, evidence or arguments that have already been submitted pursuant to Rule 15(3), within a time limit specified by it ... 2. 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 an EU trade mark, evidence of its filing or registration, by submitting: ... (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; ... (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; ...’
8 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. ... 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(2) of Regulation No 207/2009].’
9 On 14 February 2013, Gemma Group filed an application for registration of an EU trade mark at EUIPO under Regulation No 207/2009.
10 Registration as a trade mark was sought for the following figurative sign in blue:
11 The goods in respect of which registration was sought were in Class 7 of the Nice Agreement on 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’.
12 The EU trade mark application was published in Community Trade Marks Bulletin No 66/2013 of 8 April 2013.
13 On 8 July 2013, Puma filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods referred to in paragraph 11 above. The ground relied on in support of the opposition was that set out in Article 8(5) of that regulation.
14 The opposition was based, inter alia, on the following earlier marks (‘the earlier 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 Austria, Benelux, Croatia, France, Hungary, Italy, Portugal, the Czech Republic, Romania, Slovakia and Slovenia, 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 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, 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, ... ’; - Class 25: ‘Clothing, footwear, headgear; parts and components of footwear, soles, insoles and adjustment soles, heels, boot uppers; ... ’; - 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; ... ’; .
15 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 14 above.
16 On 10 March 2014, the Opposition Division of EUIPO (‘the Opposition Division’) rejected the opposition in its entirety. Having found that there was 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 Puma had filed in order to prove the extensive use and reputation of that trade mark and that the examination of the opposition would be carried out on the assumption that the earlier trade mark had ‘enhanced distinctiveness’. Starting from that premiss, it concluded, however, that the relevant public would not establish a link between the marks at issue, as required by Article 8(5) of Regulation No 207/2009, due to the differences between the goods covered by each of those marks.
17 On 7 May 2014, Puma filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
18 By the decision at issue, the Board of Appeal dismissed the appeal. 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’. Secondly, the Board of Appeal, nevertheless, rejected Puma’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 Puma 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 14 above. Thirdly, the Board of Appeal found that, even assuming that the reputation of the earlier marks were to be 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 marks or of detriment to their distinctive character or repute, had also not been satisfied.
19 By application lodged at the General Court Registry on 1 April 2015, Puma brought an action for the annulment of the decision at issue. In support of that 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.
20 As regards more particularly the first plea, Puma essentially submitted that, by rejecting the evidence which it had adduced relating to the reputation of the earlier trade marks and by departing from its decision-making practice relating to the reputation of those earlier trade marks, the Board of Appeal had infringed the principles of legal certainty and sound administration.
21 Having regard in particular to Puma’s argument alleging that the Board of Appeal failed to provide adequate reasons justifying such a departure from its decision-making practice, the General Court restated the content of the right to sound administration and made clear that it includes, among other obligations, the obligation for the administration to give reasons for its decisions.
22 It also stated that the Court of Justice has consistently held that, in accordance with the principles of equal treatment and sound administration, EUIPO is required to take into account decisions already taken in respect of similar applications and to consider with especial care whether it should decide in the same way or not, provided that respect for those principles is consistent with respect for legality.
23 The General Court went on to state in paragraph 30 of the judgment under appeal that, by three decisions of 20 August 2010, 30 August 2010 and 30 May 2011 (‘the three previous decisions), EUIPO concluded that the earlier marks had a reputation and were widely known to the public. In that same paragraph, the General Court outlined the essential content of the decisions and the evidence presented by Puma in the proceedings which led to those decisions. In paragraph 31 of the judgment under appeal, the General Court observed that those decisions, which were duly relied on by Puma in the proceedings before the Board of Appeal, were nonetheless not examined or even mentioned in the decision at issue, as the Board of Appeal merely stated that EUIPO was not bound by its previous decision-making practice.
24 Thus, the General Court considered, first, that the earlier trade marks had been found to have a reputation by EUIPO in the three previous decisions, borne out by a number of decisions from national offices adduced by Puma and, secondly, that that finding was a finding of a factual nature which did not depend on the trade mark applied for.
25 In paragraph 34 of the judgment under appeal, the General Court drew the following conclusion: ‘... 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.’
26 In that regard, the General Court rejected EUIPO’s argument that those decisions did not have to be taken into account since none of them was accompanied by the evidence of the earlier marks’ reputation which had been submitted in the relevant proceedings. The General Court explained that, when examining an appeal directed against a decision of the Opposition Division, the Board of Appeal enjoys 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.
27 In view of the circumstances of the case, the General Court made the following observation in paragraph 37 of the judgment under appeal: ‘... 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 decision was based, which should have drawn the Board of Appeal’s attention to the existence of that evidence.’
28 The General Court concluded that EUIPO had infringed the principle of sound administration, in particular its obligation to state the reasons on which its decisions are based.
29 Finally, the General Court considered that, in view of the fact that the strength of the earlier trade marks’ reputation had to be taken into account in the overall assessment of whether there was harm for the purposes of Article 8(5) of Regulation No 207/2009, a matter upon which the Board of Appeal had ruled for the sake of completeness in the decision at issue, the Board of Appeal’s error in law might have had a decisive influence on the outcome of the opposition, since the latter had not carried out a full examination of the reputation of the earlier trade marks, thereby preventing the General Court from ruling on the alleged infringement of Article 8(5).
30 Consequently, in paragraph 44 of the judgment under appeal, the General Court upheld Puma’s first plea in law and, without examining the other pleas in the action, annulled the decision at issue in so far as the Board of Appeal had rejected its opposition.
31 EUIPO claims that the Court should: - set aside the judgment under appeal and - order Puma to pay the costs.
32 Puma contends that the Court should: - dismiss the appeal and - order EUIPO to pay the costs.
33 In support of its appeal, EUIPO relies on two grounds alleging, first, infringement of Article 76(1) of Regulation No 207/2009 and of 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, and, second, infringement of Rule 50(1) of Regulation No 2868/95 and of Article 76(2) of Regulation No 207/2009.
34 The first ground relied on by EUIPO has three parts.
35 In the first part of its first ground of appeal, EUIPO alleges that the General Court infringed Article 76(1) of Regulation No 207/2009 and the principle of sound administration. Having found that Puma ‘duly relied on’ the three previous decisions in support of its opposition, the General Court implicitly, but necessarily, accepted that a general and imprecise reference to the findings of those decisions and to the evidence submitted by Puma in those previous proceedings involving different parties amounted to reliable evidence of reputation, for the purposes of Rule 19(2)(c) of Regulation No 2868/95.
36 EUIPO states that reputation is not a fact which produces effects erga omnes, but a finding limited to the parties to the proceedings in question and to the aims of those proceedings, so that EUIPO’s previous decisions declaring that a mark has a reputation cannot, in themselves, constitute evidence of reputation in subsequent proceedings. Any reference to such decisions may thus be interpreted correctly only as a general and imprecise reference to the documents produced in the previous proceedings before EUIPO, and if EUIPO’s duty of neutrality in inter partes proceedings, laid down in Article 76(1) of Regulation No 207/2009, and the principle of sound administration are not to be prejudiced, such a reference may not be admitted as reliable evidence of reputation, contrary to the view taken by the General Court. In the absence a precise identification by the opponent of the evidence on which it intends to rely, it is impossible for EUIPO to guarantee the rights of defence of the party applying to register a sign as a mark.
37 Furthermore, the General Court’s finding disregards the adversarial principle and the principle of equality of arms between the parties in inter partes proceedings, in that it falls to the opponent, and not EUIPO, to give the trade mark applicant the opportunity to assess and, if necessary, challenge the factual basis used for the adoption of previous decisions. Moreover, EUIPO states that, in the present case, its inability to identify the relevant documents was not of a ‘physical’ nature, but was rather the result of the fact that, in the absence of a clear and specific reference to the evidence which Puma intended to rely on, it was required to search actively for the relevant documents in order find proof of reputation. Thus Puma’s argument, presented for the first time before the Court of Justice, that all the documents submitted in the previous proceedings are in any case accessible online, is not only incorrect, but also irrelevant, even if it were held to be admissible.
38 On the basis of that first error in law, the General Court’s interpretation of the decision at issue was manifestly wrong in that it considered that the previous decisions were not ‘even mentioned’ in the decision at issue, whereas they were included in the summary of Puma’s arguments, and were examined directly by the Board of Appeal in relation to the fact that they lacked any legally binding force, and in the Board of Appeal’s reasoning included for the sake of completeness.
39 In the second part of its first ground of appeal, EUIPO claims that the General Court erred in law by stating that, in accordance with the principle of good faith as interpreted by the Court of Justice in the judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM (C‑51/10 P, EU:C:2011:139), the Board of Appeal should have explained the reason why it had not taken into account EUIPO’s findings in the three previous decisions with regard to the reputation of the earlier marks. It submits that that finding of the General Court is based on two erroneous premisses, the first of which consisted in acknowledging that it was acceptable to rely on those previous decisions, which was not the case, as was demonstrated by the arguments relied on in the first part of the first ground of appeal.
40 The second erroneous premiss is the General Court’s recognition of the existence of EUIPO’s ‘decision-making practice’ having found that the earlier marks had a reputation, inasmuch as that recognition disregarded the notion of ‘reputation’ and the relative nature of the ground for refusal of registration under Article 8(5) of Regulation No 207/2009, and the adversarial nature of the proceedings provided for in Article 76(1) of that regulation.
41 Even where, as in the present case, the opponent relies on marks which have been recognised previously as having a reputation by EUIPO, it is still required to challenge the applications to register subsequent marks on a case-by-case basis by establishing in each case the reputation of the marks which it relies on. The reputation of an earlier mark depends, not only on the evidence presented by the proprietor of that mark, but also on the counter-arguments presented by the other party to the proceedings.
42 Consequently, the finding of reputation cannot be regarded as a mere finding of fact, which is essentially static, as the General Court wrongly held in paragraph 33 of the judgment under appeal. On the contrary, although it does not strictly depend on the mark applied for, such a finding is subject to the application of the adversarial principle in each individual set of opposition proceedings. In the present case, the General Court’s assessment that the three previous decisions constituted a ‘decision-making practice’ was tantamount to recognising the existence of a ‘presumption of reputation’ which infringes Article 76(1) of Regulation No 207/2009, read in conjunction with Article 8(5) of that regulation.
43 That misconception of the value of the three previous decisions led the General Court to commit other errors in law. The General Court wrongly stated that the Board of Appeal should have provided the reasons why it considered that the findings made in the three previous decisions relating to the reputation of the earlier marks had to be rejected, thereby applying the case-law arising from the judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM (C‑51/10 P, EU:C:2011:139). That case-law is relevant only to ex parte proceedings concerning the refusal of an application for registration on absolute grounds.
44 In any event, even if that case-law were applicable to inter partes proceedings, that would be the case only for issues which have to be raised for reasons of public policy, for issues identified by EUIPO as being facts which are well known, or where a factual situation which has already been established in the proceedings in question is found to be comparable to a factual situation established in earlier proceedings. On the other hand, that case-law cannot be applied in relation to the specific facts relied on in earlier proceedings or the assessments of evidence made in such proceedings in order to make a finding of fact in subsequent proceedings.
45 In the third part of its first ground of appeal, EUIPO argues in essence that the General Court could not, without infringing Article 76(1) of Regulation No 207/2009 and the principle of sound administration, conclude, as it did in paragraph 37 of the judgment under appeal, that the Board of Appeal was under the subsidiary obligation to invite, of its own motion, Puma to submit supplementary evidence of the reputation which it claimed.
46 Puma disputes all three parts of EUIPO’s first ground of appeal.
47 Puma submits, inter alia, that the General Court correctly applied the principle of sound administration, in that it found that Puma ‘duly relied on’ the three previous decisions as part of its duty, under Rule 19(2)(c) of Regulation No 2868/95, to show the reputation of the earlier marks. It is difficult to consider that the act of relying on those three previous decisions merely amounts to a general reference to the documentation produced in the earlier proceedings, when these are definitive decisions made by an administrative authority, recognising the reputation of the marks identified with precision in the notice of opposition, which are published and easily accessible on the EUIPO website, and the relevant passages of which were summarised in that notice in the language of the case. Such decisions thus constitute, in themselves, invaluable and conclusive evidence of the reputation of the earlier marks. Moreover, reputation is an objective fact with an erga omnes effect, and if the only circumstance capable of influencing that reputation is the passage of time, EUIPO provided no analysis in that regard.
48 As regards the second part of EUIPO’s first ground of appeal, Puma argues that the fact that the General Court described the three previous decisions as a ‘decision-making practice’ does not amount to a misconception of either the adversarial nature of the proceedings at hand or of the notion of ‘reputation’, since no rule of EU law authorised EUIPO to disregard or to ignore the principles of equal treatment and sound administration which required it to take into account the three previous decisions and to consider with especial care whether it should decide in the same way or not, or at least to invite, of its own motion, Puma to submit supplementary evidence of the reputation of the earlier marks.
49 With regard to the third part of EUIPO’s first ground of appeal, Puma disputes EUIPO’s arguments, stating, in essence, that the procedural obligations set out by the General Court in paragraph 37 of the judgment under appeal do not in any way prejudice EUIPO’s position in inter partes proceedings.
50 By its second ground of appeal, EUIPO argues that, having found in paragraph 37 of the judgment under appeal that the Board of Appeal should have invited Puma to submit supplementary evidence of the reputation of the earlier marks, as it was permitted to do under the third subparagraph of Rule 50(1) of Regulation No 2868/95, the General Court also incidentally infringed Article 76(2) of Regulation No 207/2009. It is clear from the wording, the context and the purpose of that provision that it applies only to the facts relied on and to the evidence presented by the parties on their own initiative. Likewise, it would not be possible to apply that provision by analogy to a situation such as the one in the present case, bearing in mind that there is a specific legal basis for that type of application, namely Article 78(1)(c) of Regulation No 207/2009. Thus, EUIPO submits that none of those two provisions could be used to circumvent EUIPO’s duty of neutrality and the underlying principle of equality of arms.
51 Puma disputes the claim that the General Court’s assessment in paragraph 37 of the judgment under appeal is vitiated by illegality.
52 By the first two parts of the first ground of appeal, which should be examined together, EUIPO disputes the General Court’s assessment of Puma’s first plea for annulment advanced before that court alleging infringement of the principles of legal certainty and sound administration in that the Board of Appeal had rejected the evidence relating to the reputation of the earlier marks and had concluded that the reputation of those marks had not been demonstrated for the purposes of Article 8(5) of Regulation No 207/2009.
53 More particularly, EUIPO submits, in essence, that the General Court infringed Article 76(1) of Regulation No 207/2009 and the principle of sound administration, read in conjunction with Rule 19(2)(c) of Regulation No 2868/95 and Article 8(5) of Regulation No 207/2009, in finding, first, that EUIPO’s three previous decisions had been ‘duly relied on’ by Puma before the Opposition Division and, secondly, that, in application of the principles of sound administration and equal treatment, as interpreted by the case-law arising from the judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM (C‑51/10 P, EU:C:2011:139), the Board of Appeal should have taken into account those decisions by considering with especial care whether it should decide in the same way or not, and that it was not authorised to disregard EUIPO’s decision-making practice without providing the slightest explanation as to the reasons which had led it to consider that the findings of fact on the reputation of the earlier marks made in those decisions were not, or were no longer, relevant.
54 In that regard, it is apparent from the wording of Article 8(5) of Regulation No 207/2009 that the application of that provision is subject to the cumulative conditions that: first, the marks at issue must be identical or similar; second, the earlier mark cited in opposition must have a reputation; and, third, there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (see, to that effect, order of 17 September 2015, Arnoldo Mondadori Editore v OHIM, C‑548/14 P, not published, EU:C:2015:624, paragraph 54).
55 More particularly, with regard to the second condition relating to the existence of a mark’s reputation, the only one at issue in the present case, it is clear from the case-law of the Court of Justice that a mark has a reputation within the meaning of EU law where it is known by a significant part of the public concerned by the goods or services covered by that mark, within a substantial part of the territory of the European Union (see, to that effect, judgment of 3 September 2015, Iron & Smith, C‑125/14, EU:C:2015:539, paragraph 17 and the case-law cited).
56 The existence of repute must be assessed by taking into consideration all the relevant factors of the case, that is to say, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it (judgment of 14 September 1999, General Motors, C‑375/97, EU:C:1999:408, paragraph 27).
57 Although the issue whether the earlier marks acquired a reputation, for the purposes of Article 8(5) of Regulation No 207/2009, constitutes a finding which is part of the assessment of the facts by the General Court which cannot be the subject of an appeal, save where the facts and evidence submitted to the General Court are distorted (see, to that effect, judgment of 21 January 2016, Hesse v OHIM, C‑50/15 P, EU:C:2016:34, paragraph 29), the issue whether the evidence presented in support of the reputation was properly obtained and whether the general principles of law and the rules of procedure in relation to the burden of proof and the taking of evidence were observed constitutes a point of law which is subject to review by the Court of Justice (see, to that effect, judgment of 10 May 2012, Rubinstein and L'Oréal v OHIM, C‑100/11 P, EU:C:2012:285, paragraph 74).
58 As regards the burden of proof and the taking of evidence, where the proprietor of a mark wishes to rely on the ground for refusing registration referred to in Article 8(5) of Regulation No 207/2009, Rule 19(1) and (2)(c) of Regulation No 2868/95 provides that EUIPO must give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition, in particular evidence that the earlier mark has a reputation, or to complete any facts, evidence or arguments that have already been submitted. Since Regulation No 207/2009 and Regulation No 2868/95 do not list the forms of evidence which the opponent may present in order to demonstrate the existence of the earlier mark’s reputation, the opponent is free, in principle, to choose the form of evidence which it considers useful to submit to EUIPO in opposition proceedings based on an earlier right; EUIPO is obliged to examine the evidence submitted by the opponent, and cannot reject out of hand a type of evidence on the basis of its form (judgment of 19 April 2018, EUIPO v Group, C‑478/16 P, not published, EU:C:2018:268, paragraphs 56 to 59).
59 Furthermore, Article 76(1) of Regulation No 207/2009 provides that, in proceedings before EUIPO, the latter must, in principle, examine the facts of its own motion. However, that provision provides that, in proceedings relating to relative grounds for refusal of registration, such as the ground provided for in Article 8(5) of that regulation, the examination is to be restricted to the facts, evidence and arguments provided by the parties and the relief sought.
60 In addition, in accordance with the settled case-law of the Court of Justice, EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, including the principles of equal treatment and sound administration (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 73, and order of 11 April 2013, Asa v OHIM, C‑354/12 P, not published, EU:C:2013:238, paragraph 41).
61 The Court of Justice has stipulated that, having regard to those principles, EUIPO must take into account the decisions previously taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, since the way in which those principles are applied, as was recalled by the General Court in paragraph 20 of the judgment under appeal, must be consistent with respect for the principle of legality, which means that the examination of any trade mark application must be stringent and full, and must be undertaken in each individual case (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 74, 75 and 77, and of 17 July 2014, Reber Holding v OHIM, C‑141/13 P, not published, EU:C:2014:2089, paragraph 45; and order of 14 April 2016, KS Sports v EUIPO, C‑480/15 P, not published, EU:C:2016:266, paragraph 37).
62 In that context, it is necessary to reject out of hand EUIPO’s argument that the General Court erred in law in holding that the principles arising from the judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM (C‑51/10 P, EU:C:2011:139) referred to in the preceding paragraph apply to proceedings based on a relative ground for refusal, such as the one provided for in Article 8(5) of Regulation No 207/2009.
63 Although it is true that those principles were established by the Court of Justice in a case concerning an absolute ground for refusal, that is to say the ground referred to in Article 7(1)(c) of Council Regulation No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), the Court of Justice then expressly ruled that they also applied to opposition proceedings based on a relative ground for refusal (see, to that effect, judgment of 17 July 2014, Reber Holding v OHIM, C‑141/13 P, not published, EU:C:2014:2089, paragraph 46; orders of 11 April 2013, Asa v OHIM,C‑354/12 P, not published, EU:C:2013:238, paragraph 42; of 15 October 2015, Cantina Broglie 1 v OHIM, C‑33/15 P, not published, EU:C:2015:705, paragraph 49; of 15 October 2015, Cantina Broglie 1 v OHIM, C‑34/15 P, not published, EU:C:2015:704, paragraph 49; and of 14 April 2016, KS Sports v EUIPO, C‑480/15 P, not published, EU:C:2016:266, paragraph 37).
64 The Court of Justice has also already explained, as the General Court pointed out in paragraphs 18 and 19 of the judgment under appeal, that the right to sound administration, in accordance with Article 41(2) of the Charter of Fundamental Rights of the European Union, includes the obligation of the administration to give reasons for its decisions. That obligation, which also stems from Article 75 of Regulation No 207/2009, has the dual purpose of enabling interested parties to know the purported justification for the measure taken so as to be able to defend their rights and of enabling the Courts of the European Union to exercise their jurisdiction to review the legality of the decision in question (see, to that effect, judgments of 10 May 2012, Rubinstein and L’Oréal v OHIM, C‑100/11 P, EU:C:2012:285, paragraph 111, and of 17 March 2016, Naazneen v OHIM, C‑252/15 P, EU:C:2016:178, paragraph 29).
65 Furthermore, that obligation has the same scope as that which derives from the second paragraph of Article 296 TFEU which requires that the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question, without it being necessary for that reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets those requirements must, nonetheless, be assessed with regard, not only to its wording, but also to its context and to all the legal rules governing the matter in question (see, to that effect, judgment of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraphs 63 to 65, and order of 14 April 2016, KS Sports v EUIPO, C‑480/15 P, not published, EU:C:2016:266, paragraph 32).
66 It follows from the foregoing that, in circumstances where an opponent relies on earlier EUIPO decisions relating to the reputation of a mark, in a precise manner, before the Opposition Division, as evidence of the reputation, for the purposes of Article 8(5) of Regulation No 207/2009, of the same earlier mark relied on in support of its opposition, it is incumbent on the competent EUIPO bodies to take into account the decisions which they have already adopted and to consider with especial care whether it should decide in the same way or not, in accordance with the case-law cited in paragraph 61 above. Where those bodies decide to take a different view from the one adopted in those previous decisions, they should, having regard to the context in which they adopt their new decision, since reliance on those previous decisions forms part of that text, provide an explicit statement of their reasoning for departing from those decisions.
67 It is in the light of those considerations that it is necessary to examine whether in the present case, as EUIPO claims, the General Court infringed Article 76(1) of Regulation No 207/2009 and the principle of sound administration, read in conjunction with Rule 19(2)(c) of Regulation No 2868/95 and Article 8(5) of Regulation No 207/2009.
68 With regard, first, to EUIPO’s argument that the General Court erred in law in paragraph 31 of the judgment under appeal in finding that the three previous decisions recognising the reputation of the earlier marks had been ‘duly relied on’ by Puma, it must be observed, first of all, that the General Court found in paragraph 30 of the judgment under appeal that those three previous decisions had been put forward by Puma in its written pleadings before the Opposition Division.
69 As was pointed out in paragraph 58 above, the opponent is free, in principle, to choose the form of evidence which it considers useful to submit to EUIPO. Therefore, nothing precludes earlier EUIPO decisions determining the existence of reputation in other inter partes proceedings from being relied on in that context as evidence in support of the reputation of that earlier mark, in particular where they are identified in a precise manner and their substantive content is set out in the notice of opposition in the language of the case, which was what occurred in the present case.
70 In so far as EUIPO claims that, by its finding in paragraph 31 of the judgment under appeal, the General Court accepted that Puma’s reference to those decisions was a valid reference both to all of EUIPO’s assessments and to the evidence submitted by Puma in those earlier proceedings, so that that reference is valid evidence to establish the existence of the reputation of the earlier marks for the purposes of Rule 19(2)(c) of Regulation No 2868/95, it must be stated that that argument is based on a misreading of paragraph 31 which must now be put in context.
71 In that regard, the General Court’s analysis in paragraphs 30 and 31 of the judgment under appeal was intended to address Puma’s argument, summarised in paragraph 28 of that judgment, that the Board of Appeal could not depart from its ‘decision-making process’ recognising the reputation of the earlier marks without explaining how that departure from the three previous decisions was justified.
72 Since EUIPO had responded to that argument, as is clear from paragraph 29 of the judgment under appeal, by referring to the reasoning of the decision at issue, according to which the legality of EUIPO’s decisions must be assessed solely on the basis of Regulation No 207/2009 and not on the basis of an earlier decision-making practice of EUIPO or of the national offices, the General Court set out in paragraph 30 of the judgment under appeal the content of the three previous decisions, by outlining the assessments made by the competent EUIPO bodies in those decisions and by referring to the evidence on which those decisions were based.
73 As is clear from paragraphs 28 to 30 of the judgment under appeal, the General Court made those findings in order to address the issue whether EUIPO, when it adopted the decision at issue, had satisfied the obligations arising from the principle of sound administration, in particular its obligation to state reasons recalled in paragraph 64 and 65 above, in circumstances where Puma, in support of its opposition, had relied on previous decisions of EUIPO concluding that those earlier marks had a reputation, having identified them in a precise manner, and had, by summarising those decisions in the language of the case, specifically referred to the relevant passages of those decisions and the evidence which they contained.
74 It is therefore in the light of those circumstances that the General Court held in paragraph 31 of the judgment under appeal that the three previous decisions had been ‘duly relied on’ by Puma, without, however, accepting that the reference to those decisions constituted a valid reference to all of the evidence lodged in the earlier proceedings brought before the EUIPO bodies.
75 It follows that there was no error of law on the part of the General Court when it found in paragraph 31 of the judgment under appeal that the three previous decisions had been ‘duly relied on’ by Puma.
76 Secondly, with regard to EUIPO’s argument that the General Court disregarded the principle of sound administration and the scope of the obligation to state reasons by which EUIPO was bound, it must be stated that, in accordance with the case-law cited in paragraphs 61, 64 and 65 above and with what was held in paragraph 66 above, EUIPO was required to take into account the three previous decisions relied on by Puma in the present case and, were it to depart from the approach adopted in those decisions on the issue of the reputation of the earlier marks examined in those decisions and in the present case, it was incumbent on EUIPO, in view of the context of the decision at issue, to provide an explicit statement of its reasoning for that departure.
77 In that regard, it should be recalled that the General Court examined the three previous decisions relied on by Puma before the Opposition Division in paragraph 30 of the judgment under appeal - the wording of which is not called into question in the present appeal - by setting out the substantive content of those decisions. The General Court went on to note in paragraph 33 of the judgment under appeal that the reputation of the earlier marks had been established by EUIPO in those three previous decisions which were borne out by a number of national decisions concerning the same earlier marks, goods that were identical or similar to those at issue and some of the Member States concerned by the present case, adding that the finding that the earlier marks had a reputation was a finding of a factual nature which did not depend on the mark applied for.
78 In paragraph 34 of the judgment under appeal, the General Court concluded that ‘accordingly’, and having regard to the obligations stemming from the principles of sound administration and equal treatment, ‘the Board of Appeal could not depart from EUIPO’s decision-making practice without providing the slightest explanation regarding the reasons which led it to take the view that the factual findings in respect of the reputation of the earlier trade marks, which were made in [the three previous decisions, were not, or were no longer,] relevant.’
79 Thus the General Court was right to examine whether the Board of Appeal, by merely stating in the decision at issue that EUIPO was not bound by its decision-making practice, had satisfied its obligation to state reasons, in view of the context in which that decision had been made and in view of the legal rules governing the matter in question, including the principles of sound administration and equal treatment.
80 Contrary to what EUIPO claims, there was no error in law on the part of the General Court as regards its interpretation of those principles. In that regard, it is true that EUIPO’s bodies are not automatically bound by their previous decisions, given that, as the General Court rightly pointed out in paragraph 20 of the judgment under appeal, the examination of any trade mark application must be stringent and full in order to prevent trade marks from being improperly registered, so that the existence of reputation must be examined by taking into account the factual circumstances of each individual case (see, by analogy, order of 12 February 2009, Bild digital and ZVS, C‑39/08 and C‑43/08, not published, EU:C:2009:91, paragraph 17, and, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 77). It does not follow, however, that those bodies are relieved of the obligations set out in paragraph 66 above, arising from the principles of sound administration and equal treatment, including the obligation to state reasons.
81 The latter obligation is all the more important in circumstances such as those of the present case, set out in paragraph 77 above, in which the relevance of some of EUIPO’s previous decisions relied on before its bodies for the purposes of carrying out a complete examination of the existence of the reputation of the earlier mark at issue cannot be disputed, given that such an examination, as the General Court pointed out, in essence, does not strictly depend on the mark applied for.
82 The General Court was therefore right to consider that, in such circumstances, EUIPO’s bodies could not satisfy their obligation to state reasons by merely stating that the lawfulness of EUIPO’s decisions must be assessed solely on the basis of Regulation No 207/2009 and not on the basis of its earlier decision-making practice.
83 Finally, in so far as EUIPO claims that the General Court wrongly found in paragraph 31 of the judgment under appeal that the three previous decisions were ‘not examined or even mentioned’ in the decision at issue, suffice it to state that that line of argument does not succeed, since the General Court’s finding cannot be regarded as running counter to the content of that decision.
84 Although it is true that in the part of the decision at issue entitled ‘Submissions and arguments of the parties’, the Board of Appeal indicated that Puma had raised the argument that the reputation of the earlier marks had been recognised ‘in numerous Office decisions’, the fact remains that the Board of Appeal failed to cite from among the ‘evidence submitted by the opponent’ the three previous decisions and that, in the part of that decision entitled ‘Reasons’, it neither mentioned nor analysed those decisions with regard to their content or their probative value in relation to the possible reputation of the earlier marks, whereas it did do that in relation to a number of decisions of the national offices.
85 In view of all the foregoing considerations, it must be concluded that the General Court did not disregard Article 76(1) of Regulation No 207/2009 or the principle of sound administration, read in conjunction with Rule 19(2)(c) of Regulation No 2868/95 and Article 8(5) of Regulation No 207/2009, in holding that the Board of Appeal, by merely stating that, in circumstances such as those of the present case, the lawfulness of EUIPO’s decisions must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the European Union Courts, and not on the basis of an earlier decision-making practice of EUIPO or of the national offices, had disregarded the principle of sound administration, in particular the obligation to state reasons for its decisions, and thus rendered the decision at issue unlawful.
86 It follows that the first and second parts of the first ground of appeal must be rejected as unfounded.
87 By the third part of the first ground of appeal and by the second ground of appeal, which should be examined together, EUIPO alleges that the General Court infringed Article 76(1) of Regulation No 207/2009, read in conjunction with the principle of sound administration, and Article 76(2) of that regulation, read in conjunction with Rule 50(1) of Regulation No 2868/95, by holding in paragraph 37 of the judgment under appeal that, in the circumstances of the case, the Board of Appeal should have invited Puma to submit supplementary evidence of the reputation of the earlier marks - if only to refute that evidence - as it was permitted to do by the third paragraph of Rule 50(1) of Regulation No 2868/95.
88 EUIPO argues, in particular, that such an interpretation of those provisions and principles infringes the adversarial principle, as expressed in Article 76(1) of Regulation No 207/2009 in relation to inter partes proceedings before EUIPO, and disregards the fact that EUIPO’s obligation to exercise its discretion to decide whether or not to take into account facts and evidence submitted late applies only to the facts and evidence presented by the parties on their own initiative.
89 Thus, by its line of argument, EUIPO in essence criticises the General Court for having transformed the Board of Appeal’s discretion under Article 76(2) of Regulation No 207/2009, read in conjunction with Rule 50(1) of Regulation No 2868/95, to decide whether to take into account supplementary facts and evidence which were not presented within the time limits set by the Opposition Division, into an obligation, with that obligation, in EUIPO’s opinion, also being wrongly extended to the facts and evidence which the parties did not submit of their own initiative.
90 In that regard, it is clear from paragraph 35 of the judgment under appeal that EUIPO argued before the General Court that the Board of Appeal was not required to take into account the three previous decisions on the ground that Puma had not provided the Opposition Division with the evidence of the reputation of the earlier marks produced in the proceedings which led to those decisions being adopted. According to EUIPO, Puma should have lodged that evidence again or referred to it in a precise manner.
91 In reply to that line of argument, the General Court, in paragraph 36 of the judgment under appeal, correctly referred to the case-law according to which Article 76(2) of Regulation No 207/2009 and the third subparagraph of Rule 50(1) of Regulation No 2868/95 grant EUIPO the discretion to decide whether or not to take into account additional or supplementary facts and evidence which were not presented within the time limits set or specified by the Opposition Division. In accordance with those provisions, when evidence is produced within the time limit set by EUIPO, as it is agreed to be in the present case, the production of supplementary evidence remains possible (see, to that effect, judgment of 21 July 2016, EUIPO v Grau Ferrer, C‑597/14 P, EU:C:2016:579, paragraph 26 and the case-law cited).
92 However, by stating in paragraph 37 of the judgment under appeal that ‘in the circumstances of the present case, in the light of its recent previous decision-making practice, which is borne out by a relatively high number of national decisions and by a judgment of the General Court, the Board of Appeal should, in accordance with the principle of sound administration ... have ... requested that the applicant submit supplementary evidence of the reputation of the earlier marks - if only to rebut it - as the third subparagraph of Rule 50(1) of Regulation No 2868/95 enabled it to do’, the General Court did not rely on Article 76(2) of Regulation No 207/2009 and the third subparagraph of Rule 50(1) of Regulation No 2868/95, but on the principle of sound administration.
93 In the present case, it is clear from paragraphs 30, 33 and 37 of the judgment under appeal that, in the notice of opposition, the substantive content of the three previous decisions was set out by Puma in the language of the case, such that it must be considered that that content was made known to the Opposition Division and the Board of Appeal, and to Gemma Group.
94 It is also clear from paragraph 30 of the judgment under appeal that, in the three previous decisions, the competent EUIPO bodies had established that one of the earlier marks had been found, ‘on the basis of a large number of items of evidence’, to have a ‘substantial reputation, at least in France’ and that one of them was also considered ‘in the light of the extensive evidence provided,’ to have acquired ‘a substantial reputation through use in the European Union’, enjoying a ‘high degree of distinctiveness as a result of its “long standing and intensive use” and “high degree of recognition”’. The General Court also established that some of those decisions described in great detail the evidence which had led to the conclusion that the earlier marks had a reputation.
95 In that context, the three previous decisions, in so far as they had recognised the reputation of the earlier marks, were a strong indication, in the opposition proceedings at issue, that those marks could also be regarded as having a reputation for the purposes of Article 8(5) of Regulation No 207/2009, as has already been stated in paragraph 81 above.
96 Therefore, as has already been held in paragraph 76 above, EUIPO was required to take into account the three previous decisions relied on by Puma and had to provide an explicit statement of its reasoning in the present case in so far as it had decided to depart from the approach adopted in those decisions on the reputation of the earlier marks.
97 That being so, if the Board of Appeal itself were to reach the conclusion that it could not satisfy its obligations arising from the principle of sound administration and, in that context in particular, its obligation to state reasons, recalled in paragraph 66 above, without the evidence which had been lodged in the earlier proceedings before EUIPO, it must be considered, as the General Court did, that it would have been necessary for the Board to exercise its power to request the production of that evidence for the purposes of exercising its discretion and carrying out a full examination of the opposition.
98 It must be recalled in that respect, as the Court of Justice has already held, that it follows from Article 63(2) of Regulation No 207/2009, read in conjunction with Article 78 of that regulation, that, for the purposes of the examination of the merits of the appeal brought before it, the Board of Appeal of EUIPO is not only to invite the parties, as often as necessary, to file, within time limits which it sets, observations on notifications which it has sent to them, but may also decide on measures of inquiry, including the production of facts or evidence. In turn, such provisions demonstrate the possibility of seeing the underlying facts of a dispute multiply at various stages of the proceedings before EUIPO (judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 58, and of 28 February 2018, mobile.de v EUIPO, C‑418/16 P, EU:C:2018:128, paragraph 57).
99 In the light of that case-law and the case-law recalled in paragraph 91 above, according to which, when evidence is produced within the time limit set by EUIPO, the production of supplementary evidence remains possible, an obligation, such as the one established by the General Court in paragraph 37 of the judgment under appeal pursuant to the principle of sound administration, cannot be regarded as running counter to the provisions of Regulation No 207/2009.
100 Thus, the General Court did not err in law in concluding in paragraph 37 of the judgment under appeal that, in the circumstances of the present case, it was incumbent on the Board of Appeal, in accordance with the principle of sound administration, either to provide the reasons why it considered that the findings made by EUIPO in the three previous decisions relating to the reputation of the earlier marks had to be disregarded in the present case, or request that Puma submit supplementary evidence of the reputation of the earlier marks.
101 In view of all of the foregoing considerations, the third part of the first ground of appeal and the second ground of appeal raised by EUIPO must be rejected as unfounded.
102 Since the grounds and arguments raised in support of the appeal have been rejected, the appeal must be dismissed.
103 Under Article 184(2) of the Rules of Procedure of the Court of Justice, where the appeal is unfounded, the Court is to make a decision as to the costs.
104 Under Article 138(1) of those rules, applicable to appeal proceedings by virtue of Article 184(1) thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
105 Since EUIPO has been unsuccessful and Puma has applied for costs, EUIPO must be ordered to pay the costs.