AG advises CJEU to reject EUIPO appeal in Puma case
An advocate general (AG) has advised the Court of Justice of the European Union to reject an appeal from the European Union Intellectual Property Office (EUIPO) in its clash with sportswear company Puma over trademark reputation.
In 2013, Puma opposed a mark filed by Italy-based Gemma Group, based on two of Puma’s figurative marks (one of the outline of a leaping puma, the other of a leaping puma in black).
The following year, the EUIPO’s Opposition Division rejected Puma’s opposition.
Puma appealed, but in December 2014, the EUIPO’s Fifth Board of Appeal dismissed Puma’s attempt.
The appeal board found there was a certain degree of visual similarity between the marks as they conveyed the same concept of a “pouncing feline recalling a puma”. However, it disagreed with Puma’s argument that the Opposition Division had confirmed that the earlier marks had a reputation.
Puma was more successful before the EU General Court in September 2016.
The sportswear company argued that the Board of Appeal had erred by departing from the decision-making practice of the EUIPO and several decisions of national offices which concluded the earlier marks have a reputation.
According to the General Court, the appeal board should have provided the reasons why it took the view that the findings made in the previous decisions on reputation had to be discounted or invited Puma to submit supplementary information.
That finding alone was not enough to annul the decision, but the court found that the error may have had a “decisive influence on the outcome of the opposition” and annulled the decision to reject Puma’s opposition.
In November 2016, the EUIPO appealed against the decision, arguing that the General Court had disregarded the office’s procedural position and obligations, breached the principle of sound administration and erred in holding that the EUIPO had a duty to invite Puma to submit more information.
Today, AG Melchior Wathelet issued an opinion that the General Court didn’t err in accepting Puma’s reference to three previous EUIPO decisions as valid references on reputation.
“Contrary to the EUIPO’s submission … the account taken of a previous decision-making practice relating to the reputation enjoyed by a trademark is not contrary to the adversarial nature of the opposition proceedings,” said Wathelet.
He added that the General Court was right to find that the appeal board couldn’t depart from the EUIPO’s decision-making without providing an explanation.
In disagreeing with the EUIPO’s suggested reading, Wathelet said that the General Court did not turn the EUIPO’s right to take into account evidence which the parties had failed to produce in due time into an obligation to request the evidence.
He proposed that the court dismiss the appeal and order the EUIPO to pay costs.
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