A recent decision of the CJEU means that EUIPO bodies now have an obligation to take into account earlier decisions and if they depart from those decisions, provide an explicit statement of their reasons for doing so. In this blog we take a look at this decision in EUIPO v Puma SE (Case C 564/16).
On 14 February 2013, Gemma Group Srl filed an application for registration of an EU trade mark for the following mark:
This application covered various goods in class 7: ‘Machines for processing of wood; Machines for processing aluminium; Machines for treatment of PVC’. This application was opposed by Puma on the basis of prior registrations for the following marks:
Puma's registrations covered a range of goods in classes 18, 25, and 28 and the opposition was accordingly based on Article 8(5) of Regulation No 207/2009, which provides that a trade mark must not be registered if it is identical or similar to an earlier trade mark that covers different goods and services, where the earlier mark has a reputation, and 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.
It is well established that to prove such an injury, the opponent must show that there is sufficient similarity between the marks that the relevant section of the public makes a connection between those marks, i.e. establishes a 'link' between them.
Opposition Division and Board of Appeal decisions
In its initial decision, the Opposition Division moved forward 'for reasons of procedural economy' on the assumption that Puma had the requisite level of reputation in the earlier marks to support an Article 8(5) claim, but rejected the opposition on the basis that the required 'link' was not established.
Puma appealed and the Board of Appeal rejected Puma's argument that the Opposition Division had confirmed that Puma had a reputation in the earlier marks. It also examined the evidence filed by Puma and ruled that it did not establish a sufficient reputation, and held that even if it did, the other conditions of Article 8(5), i.e. the 'link' were not established anyway. As part of its evidence, Puma had relied on three earlier EUIPO decisions holding it had the required reputation. The Board of Appeal rejected the three earlier decisions as evidence of reputation, simply stating it was not bound by earlier decisions. The evidence filed in the earlier cases had not been re-filed in its entirety in the present action, although it was described in depth in the earlier decisions.
General Court decision
Puma argued before the EU General Court that the Board of Appeal had infringed the principles of legal certainty and sound administration by departing from earlier decisions holding that it did have a reputation in the earlier marks without providing adequate reasons for the departure. The General Court agreed with Puma holding that the Board should have requested that the evidence filed in the earlier cases be submitted as supplementary evidence, if only to rebut it, or provided reasons as to why it disagreed with the findings in the earlier cases.
The EUIPO appealed the General Court's decision to the CJEU. The CJEU upheld the General Court's decision, ruling at paragraph 66 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 … 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 decision
This decision does not create a common law style system of binding precedent, but it should increase the predictability and consistency of decisions by EUIPO bodies. In this sense the decision is a welcome one. However, it is not without risk for brand owners, who may find themselves having to devote more resources to EUIPO proceedings in the knowledge that an adverse decision may have ramifications for future disputes.