CJEU rejects EUIPO appeal in Puma TM dispute
The Court of Justice of the European Union (CJEU) has today upheld a decision by the EU General Court concerning the reputation of two of Puma’s trademarks.
In upholding the ruling, the CJEU dismissed an appeal by the European Union Intellectual Property Office (EUIPO) against the General Court decision.
Italy-based machine manufacturer Gemma Group applied for a trademark at the EUIPO in 2013 for a figurative sign depicting the blue outline of a leaping feline-like animal.
The goods and services covered by the registration fell under class 7, covering machines for processing wood and aluminium and machines for the treatment of PVC.
German-based sports brand Puma filed a notice of opposition based on two of its earlier figurative marks which it said had a reputation in the EU: one representing the outline of a leaping puma, the other of a leaping puma in black.
The EUIPO’s Opposition Division rejected Puma’s opposition in 2014. This decision was supported by the EUIPO’s Fifth Board of Appeal in the same year.
The appeal board said there was a certain degree of visual similarity between the disputed marks, but it disagreed with Puma’s argument that the Opposition Division had confirmed that the earlier marks had a reputation.
In 2016, the General Court annulled the EUIPO’s decision to reject Puma’s opposition.
The General Court said that the reputation of the Puma marks had already been established by three previous decisions from the EUIPO and that the EUIPO had failed to take into account these decisions when considering Puma’s opposition.
The EUIPO responded by appealing against the decision.
It claimed that the General Court had infringed the principles of sound administration and was wrong to conclude that the appeal board should have explained why it had not taken into account the three previous judgments.
In January, an advocate general Melchior Wathelet said: “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.”
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 reasons.
In its ruling today, the CJEU said that the General Court was correct to find that the EUIPO’s three previous decisions had been “duly relied” on by Puma during its opposition.
Regarding the EUIPO’s argument that there was a violation of the principles of sound administration, the CJEU said that the appeal board should have taken into account the previous decisions “by considering with especial care whether it should decide in the same way or not”.
It added that the appeal board was not authorised to disregard the EUIPO’s previous decision-making practice without explaining its reasons.
The EUIPO’s appeal was dismissed and it was ordered to pay the costs.
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