Puma v EUIPO - Gemma Group (Representation d'un felin bondissant) (Judgment) [2016] EUECJ T-159/15 (09 September 2016)

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(EU trade mark — Opposition proceedings — Application for an EU figurative mark representing a bounding feline — Earlier international figurative marks representing a bounding feline — Relative ground for refusal — Sound administration — Proof of the reputation of the earlier marks — Article 8(5) of Regulation (EC) No 207/2009)

Puma SE, established in Herzogenaurach (Germany), represented by P. González-Bueno Catalán de Ocón, lawyer,

European Union Intellectual Property Office (EUIPO), represented initially by P. Bullock, and subsequently by D. Hanf, acting as Agents,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 19 December 2014 (Case R 1207/2014-5), relating to opposition proceedings between Puma and Gemma Group,

composed of M. van der Woude (Rapporteur), President, I. Wiszniewska-Białecka and I. Ulloa Rubio, Judges,

1 On 14 February 2013, Gemma Group Srl filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

3 The goods in respect of which registration was sought are in Class 7 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Machines for processing of wood; machines for processing aluminium; machines for treatment of PVC’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 66/2013 of 8 April 2013.

5 On 8 July 2013, the applicant, Puma SE, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above. The ground for the opposition was that set out in Article 8(5) of Regulation No 207/2009.

6 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 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, portfolios, storage and shopping bags, school bags, bags for campers, rucksacks, pouches, match bags, transport and storage bags, and travel bags made from leather and imitation leather, synthetic materials, base-metal alloys and textile fabrics; travelling sets (leatherware); shoulder belts (straps); animal skins; trunks and suitcases; umbrellas, parasols and walking sticks; whips, saddlery’;

– Class 25: ‘Clothing, footwear, headgear; parts and components of footwear, soles, false soles and corrective soles, heels, boot uppers; non-slipping devices for boots, studs and spikes; ready-made interlining and pockets for clothes; corsetry items; boots, slippers and mules; finished items of footwear, street shoes, sports shoes, leisure footwear, shoes for physical training, running shoes, gymnastic, bathing and physiological slippers included in this class, tennis shoes; gaiters and spats, gaiters and spats of leather, leggings, puttees, spats for shoes; clothes for physical training, trunks and jerseys for gymnastics, trunks and jerseys for football, shirts and shorts for tennis, swimwear and beach clothing, swimming pants and underpants and swimming costumes, included two-piece swimwear, clothing for sports and leisure, including knitwear and jerseys, as well as for physical training, jogging, endurance running and gymnastics, trunks and trousers for sports, jerseys, jumpers, tee-shirts, sweat-shirts, clothing for tennis and skiing; tracksuits and leisure clothing, all-weather tracksuits and clothing, stockings (hosiery), football socks, gloves, including leather gloves, as well as imitation or synthetic leather, hats and caps, hair bands, head bands and sweat bands, scarves, shawls, headscarves, mufflers; belts, anoraks and parkas, raincoats, overcoats, overalls, jackets, skirts, breeches and trousers, pullovers and matching combinations composed of several items of clothing and underclothing; underclothing’;

– 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; equipment for skiing, tennis and fishing; skis, ski bindings and ski poles; edges of skis and coverings for skis; balls for games and play balloons, including balls and balloons for sports and games; dumb-bells, shots, discuses, javelins; tennis rackets, bats for table tennis or ping-pong, badminton and squash, cricket bats, golf clubs and hockey sticks; tennis balls and tennis ball throwing apparatus; roller skates and skates, combination shoes for roller-skating, also with reinforced soles; tables for table tennis; clubs for gymnastics, barrel hoops for sports, nets for sports, goal nets and ball nets; sports gloves (games accessories); dolls, dolls clothes, dolls shoes, caps and bonnets for dolls, belts for dolls, aprons for dolls; knee-pads, elbow-pads, ankle-protectors and leggings for sports; decorations for Christmas trees’:

7 In support of its opposition based on Article 8(5) of Regulation No 207/2009, the applicant relied on the reputation of the earlier marks in all the Member States and for all the goods listed in paragraph 6 above.

8 On 10 March 2014, the Opposition Division rejected the opposition in its entirety. Regarding the reputation of earlier mark No 593987, it took the view that, for reasons of procedural economy, it was not necessary to examine the evidence which the applicant had filed in order to prove the extensive use and reputation of that mark and that the examination would be carried out on the assumption that that earlier mark had ‘enhanced distinctiveness’.

9 On 7 May 2014, the applicant 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.

10 By decision of 19 December 2014 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. First, it found that there was a certain degree of visual similarity between the earlier marks and the mark applied for and that they conveyed the same concept of a ‘pouncing feline recalling a puma’. Secondly, the Board of Appeal rejected the applicant’s argument that the Opposition Division had confirmed that the earlier 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 the applicant did not have to be assessed in the present case and that the examination would proceed on the assumption that earlier mark No 593987 had ‘enhanced distinctiveness’. The Board of Appeal also examined and rejected the evidence of the reputation of the earlier marks regarding the goods referred to in paragraph 6 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.

Admissibility of the documents submitted for the first time before the General Court

13 As a preliminary point, EUIPO considers that the images reproduced in paragraph 56 of the application, which are taken from the website of a third party, constitute ‘new documents’ which are inadmissible.

14 Those images, which were produced for the first time before the Court, cannot be taken into consideration. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned images must be excluded and there is no need to assess their probative value (see, to that effect, judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).

15 The applicant puts forward, in essence, three pleas in law in support of its action, alleging, (i) infringement of the principles of legal certainty and sound administration inasmuch as the Board of Appeal rejected the evidence relating to the reputation of the earlier 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 examined the evidence relating to the reputation of the earlier marks although the Opposition Division had not carried out such an examination, and (iii) infringement of Article 8(5) of that regulation.

16 As regards, the first plea, alleging infringement of the principles of legal certainty and sound administration, the applicant submits, in essence, that, by rejecting the applicant’s evidence relating to the reputation of the earlier marks and by departing from its decision-making practice relating to the reputation of the earlier marks, the Board of Appeal infringed the principles of legal certainty and sound administration. In support of that plea, the applicant puts forward two arguments, one relating to the Board of Appeal’s refusal to take into consideration the evidence which had not been translated into the language of the proceedings and the other regarding the Board of Appeal’s alleged departure from its decision-making practice.

17 The Board of Appeal listed the following items of evidence in the contested decision in the present case: two market surveys relating to France (2008) and Sweden (2011), 15 decisions of national trade mark offices, namely three of the Urząd Patentowy Rzeczypospolitej Polskiej (Polish Patent Office), four of the Institut national de la propriété industrielle (INPI) (National Institute for Industrial Property (INPI)), one of the Instituto nacional da propriedade industrial (INPI, Portuguese Institute for Industrial Property) and seven of the Oficina Española de Patentes y Marcas (Spanish Patents and Trade Marks Office), and the judgment of 7 November 2013, Budziewska v OHIM — Puma (Bounding feline) (T‑666/11, not published, EU:T:2013:584). It found that the market survey relating to Sweden was irrelevant since the opposition was not based on any earlier rights in Sweden and that the market survey relating to France had not been provided in the language of the proceedings, which was English, contrary to Rule 19(1), (3) and (4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1). It pointed out that, in addition, that latter market survey had been carried out five years before the trade mark application was filed and that it was unclear on what basis that market survey had been conducted and to which goods the alleged reputation related. Similarly, the Board of Appeal pointed out that two of the three decisions of the Polish Patent Office and the decisions of the Spanish Patents and Trade Marks Office had not been translated into the language of the proceedings and therefore had to be rejected. Regarding the 2008 decision of the Polish Patent Office and the decisions of the French INPI which had been translated, the Board of Appeal found that it was unclear on the basis of what evidence those national offices had concluded that the earlier marks had a reputation. It explained, by way of example, that the decision of the French INPI of 13 November 2012 simply referred to documents which had been submitted to attest to the fact that the figurative element of a puma in the earlier mark was very well known in the field of clothing, but that it was impossible to verify the truth of that statement without the evidence of reputation which had been submitted in those national proceedings. It stated in that regard that reputation must be assessed on the basis of the evidence submitted by the opponent in accordance with Rule 19(1) and (4) of Regulation No 2868/95 and pointed out that documents submitted in other proceedings could only be taken into account if explicitly referenced and identified by the party relying on them. Lastly, the Board of Appeal stated that, in any event, the legality of EUIPO’s decisions had to be assessed solely on the basis of Regulation No 207/2009, as interpreted by the European Union judicature, and not on the basis of a previous decision-making practice of EUIPO or national offices. In conclusion, the Board of Appeal found that, in its entirety, the evidence was insufficient to show that the earlier marks had a reputation in relation to the specific goods in any of the relevant Member States.

18 Before examining the applicant’s two arguments, it should be noted that, according to Article 41(2) of the Charter of Fundamental Rights of the European Union, the right to good administration includes, inter alia, the obligation of the administration to give reasons for its decisions.

19 It is apparent from settled case-law that the purpose of the obligation that decisions of EUIPO must state the reasons on which they are based is twofold: first, to enable the persons concerned to ascertain the reasons for the measure in order to defend their rights and, secondly, to enable the Courts of the European Union to exercise their power to review the legality of the decision (judgments of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraphs 64 and 65, and 28 November 2013, Herbacin cosmetic v OHIM — Laboratoire Garnier (HERBA SHINE), T‑34/12, not published, EU:T:2013:618, paragraph 42).

20 It must also be pointed out that the Court has held that, in the light of the principles of equal treatment and sound administration, EUIPO must, when examining an application for registration of an EU trade mark, 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. However, it added that the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 74 to 77).

21 As regards its first argument, relating to the Board of Appeal’s refusal to take into consideration certain items of evidence which had not been translated, the applicant submits that the market survey relating to France is admittedly in French, but that it was not necessary to translate it since that study is ‘absolutely self-evident’ regarding the reputation of the earlier marks. Furthermore, the applicant submits that the same survey has been filed in other opposition proceedings without any objection on the part of the adjudicating bodies of EUIPO.

22 EUIPO disputes that argument by referring in essence to Rule 19 of Regulation No 2868/95.

23 Rule 19(3) of Regulation No 2868/95 provides that ‘the information and evidence referred to in paragraphs 1 and 2 [of Rule 19] shall be in the language of the proceedings or accompanied by a translation’, which ‘shall be submitted within the time limit specified for submitting the original document’. Rule 19(4) of Regulation No 2868/95 provides that ‘[EUIPO] shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by [EUIPO]’.

24 Rule 19 of Regulation No 2868/95 is clear and precise and enabled the applicant to ascertain as from the start of the opposition proceedings, in accordance with the principle of legal certainty, what it had to do regarding the evidence which existed in a language different from that of the language of the proceedings.

25 It must therefore be held that the Board of Appeal was correct in taking the view that the documents which had not been translated into the language of the proceedings could not be taken into consideration. The fact that the market survey relating to France was in any event ‘absolutely self-evident’ or that it had allegedly been allowed without a translation in previous proceedings cannot affect such a finding. Rule 19 of Regulation No 2868/95 is justified by the necessity to observe the principle of the right to be heard and to ensure equality of arms between the parties in inter partes proceedings (see, to that effect, judgment of 6 November 2007, SAEME v OHIM — Racke (REVIAN’s), T‑407/05, EU:T:2007:329, paragraph 35 and the case-law cited).

26 Furthermore, it is apparent from the case-law cited in paragraph 20 above that the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. The fact that Rule 19 of Regulation No 2868/95 could have been infringed in other cases therefore has no bearing on the present case.

27 The first argument which the applicant has put forward in support of its first plea must therefore be rejected.

28 As regards its second argument, the applicant invokes an error in law that the Board of Appeal allegedly made by departing from the decision-making practice of EUIPO, which the applicant had, however, relied on, as well as from several decisions of national offices and the judgment of 7 November 2013, Bounding feline (T‑666/11, not published, EU:T:2013:584). The applicant submits that all of those decisions concluded that the earlier marks have a reputation. It maintains that reputation is a fact which is specific to marks which have been recognised as having a reputation and that it cannot be contingent on the marks cited in opposition. It takes the view that the Board of Appeal did not explain in what respect such a departure from the decisions relied on was justified.

29 EUIPO disputes that argument. First, it takes the view that the applicant cannot, by invoking the previous decision-making practice, criticise the Board of Appeal for not having taken the evidence of reputation into account. It refers, in essence, to the reasoning, in paragraph 20 of the contested decision, that the legality of EUIPO’s decisions must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the European Union judicature, and not on the basis of a previous decision-making practice of EUIPO or national offices, and submits that EUIPO’s decision-making practice does not automatically apply because each case is characterised by specific factual and legal circumstances that may lead to different conclusions.

30 In the present case, it must be pointed out that the applicant submitted in its written pleadings before the Opposition Division that there was a recent decision-making practice of EUIPO which concluded that the earlier marks had a reputation and were widely known to the public. It is apparent from EUIPO’s decision of 30 May 2011 (opposition No B1291618) that earlier mark No 480105 was found, on the basis of a large number of items of evidence, to have a substantial reputation, at least in France, in the light of its use on the market in relation to goods in Class 25 (clothing, boots, shoes and slippers). The following items of evidence were, inter alia, listed in that decision: a history of the undertaking and press cuttings, extracts from its website, pictures of a world-famous female tennis player wearing the applicant’s goods, press cuttings showing famous football teams wearing the applicant’s goods, catalogues of shoes and clothing dating from 1996 to 1998 with pictures of the applicant’s goods, documents showing the applicant’s sponsorship activities in the field of motor sports, copies of the magazine Sporting Goods Intelligence from 2002 to 2007 containing information on the sports sector and mentioning the applicant’s mark or the company name ‘Puma’, copies of articles and advertisements from numerous magazines in France, Germany, Spain, Benelux, Italy, the United Kingdom, Romania and Greece and the 2007 annual report showing that the marketing expenditure went from EUR 29 million in 1997 to EUR 424.9 million in 2007. EUIPO explained that it was clear from the evidence provided that that earlier mark had been subject to ‘long standing and intensive’ use and was generally known on the relevant markets, where it enjoyed a ‘consolidated position’ among the ‘leading brands’, as was apparent from ‘independent and diverse sources’. Furthermore, EUIPO mentioned various references in the press (for example Votre Beauté, Maximal, Femme Actuelle, Le Point, Têtu, Paris Match, Biba, Vogue, Glamour, and so forth) which, among other elements, showed that the mark enjoyed a high degree of recognition among the relevant public. According to EUIPO’s decision of 30 August 2010 on opposition No B1287178, earlier mark No 593987 was also considered, in the light of the extensive evidence provided, to have acquired a substantial reputation through use in the European Union, in respect of clothing, footwear, headgear and sports articles not included in other classes. In its decision of 20 August 2010 on opposition No B1459017, EUIPO also concluded that earlier mark No 593987 enjoyed a high degree of distinctiveness as a result of its ‘long standing and intensive’ use and ‘high degree of recognition’.

31 Those earlier decisions of EUIPO, which were duly relied on by the applicant, were nonetheless not examined or even mentioned in the contested decision, as the Board of Appeal merely stated that EUIPO was not bound by its previous decision-making practice.

32 Furthermore, the conclusions which were reached in those decisions as regards the reputation of the earlier marks were borne out by the decisions of national offices provided. Accordingly, contrary to the findings of the Board of Appeal, the decision of the Polish Patent Office of 4 July 2008 was in itself particularly detailed as regards the evidence on which it had based its assessment of the reputation of the earlier marks (including earlier mark No 593987). The Polish Patent Office thus detailed, inter alia, the applicant’s global marketing and advertising campaigns and its sponsoring of sports personalities. It stated, inter alia, that the undertaking had been present on the market since 1948, that is to say, for 60 years as at the date of its decision, and that the mark representing a jumping feline had been widely known in Poland for many years. On the basis of evidence which it found to be ‘reliable, logical and consistent’ and which it found credibly showed the applicant’s efforts with regard to the promotion of its mark, it took the view that the applicant’s marks showing a jumping feline had been intensively used in trade and had, as a result, acquired renown. Furthermore, the decisions of the French INPI, in particular those of 10 April 2013 and 25 October and 13 November 2012, and the decision of the Portuguese INPI of 10 March 2009, although they do not detail the evidence on which their conclusions were based, all agree that the applicant’s earlier marks are widely known to the relevant public (in particular in the context of clothing) or have a reputation. Lastly, it is apparent from the judgment of 7 November 2013, Bounding feline (T‑666/11, not published, EU:T:2013:584, paragraph 36), relied on by the applicant, that the ‘design [corresponding to the earlier marks has a] reputation’. It is true that that case concerned invalidity proceedings in respect of a design, but the application for a declaration of invalidity was based on earlier designs which had been ‘made available’ in international trade mark registrations of the applicant, including in the earlier marks.

33 It must thus be pointed out, first, that the earlier marks have been found to have a reputation by EUIPO in three recent decisions, which have been borne out by a number of national decisions, and that those decisions concerned the same earlier marks, goods which are identical or similar to those at issue and some of the Member States concerned in the present case. Secondly, the finding that the earlier marks have a reputation is a finding of a factual nature which does not, as the applicant observes, depend on the mark applied for.

34 Accordingly, it must be held that, in the light of the case-law referred to in paragraph 20 above, 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.

35 Secondly, EUIPO submits that those decisions did not have to be taken into account on the ground that none of them was accompanied by the evidence of the earlier marks’ reputation which had been submitted in the context of those proceedings. It states that the applicant should have filed the evidence of reputation which it had already provided in those previous proceedings again or made a specific reference to it.

36 Under the third subparagraph of Rule 50(1) of Regulation No 2868/95, where the appeal is directed against a decision of an Opposition Division, the Board of Appeal must limit its examination of the appeal to facts and evidence presented within the time limits set in or specified by the Opposition Division, unless it considers that additional or supplementary facts and evidence should be taken into account pursuant to Article 76(2) of Regulation No 207/2009. Regulation No 2868/95 therefore expressly provides that the Board of Appeal enjoys, when examining an appeal directed against a decision of the Opposition Division, the discretion deriving from the third subparagraph of Rule 50(1) of Regulation No 2868/95 and from Article 76(2) of Regulation No 207/2009 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 (judgment of 3 October 2013, Rintisch v OHIM, C‑120/12 P, EU:C:2013:638, paragraphs 31 and 32).

37 Consequently, 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 as explained in paragraphs 18 to 20 above, 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.

38 In the light of the foregoing, it must be held that there has been infringement of the principle of sound administration, in particular of EUIPO’s obligation to state the reasons on which its decisions are based.

40 However, that finding alone is not sufficient to annul the contested decision. It must be noted that the Board of Appeal also ruled, for the sake of completeness, on whether the other necessary condition under Article 8(5) of Regulation No 207/2009 was satisfied, namely on whether there was detriment to, or unfair advantage taken of, the distinctive character or the repute of the earlier marks.

41 In that regard, it must be held that the error which the Board of Appeal made may have a decisive influence on the outcome of the opposition. It is true that the Board of Appeal based its assessment of whether there was harm, for the purposes of Article 8(5) of Regulation No 207/2009, on the assumption that the reputation of the earlier marks had been proven. However, the strength of the earlier marks’ reputation must be taken into account in the overall assessment of whether there is harm, for the purposes of Article 8(5) of Regulation No 207/2009, both as regards the assessment of whether there is a link between the marks and the assessment of whether there is harm for the purposes of Article 8(5) of Regulation No 207/2009, which are separate and necessary conditions.

42 Whether a link between the marks exists must be assessed globally, taking into account all factors relevant to the circumstances of the case, which include the strength of the earlier mark’s reputation and the degree of the earlier mark’s distinctive character, whether inherent or acquired through use (judgments of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 41, 42 and 53, and 12 March 2009, Antartica v OHIM, C‑320/07 P, not published, EU:C:2009:146, paragraph 45). Like the existence of a link between the marks at issue, the existence of one of the types of harm referred to in Article 8(5) of Regulation No 207/2009, or a serious likelihood that such harm will occur in the future, must be assessed globally, taking into account all factors relevant to the circumstances of the case, which include the strength of the earlier mark’s reputation and the degree of the earlier mark’s distinctive character, whether inherent or acquired through use (judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 42 and 68). Furthermore, the stronger the earlier mark’s distinctive character and reputation the easier it will be to accept that harm has been caused to it (see judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 69 and the case-law cited).

43 Since the Board of Appeal did not carry out a full examination of the reputation of the earlier marks, the Court is not in a position to rule on the plea alleging infringement of Article 8(5) of Regulation No 207/2009 (see, to that effect, judgments of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraphs 72 and 73; 14 December 2011, Völkl v OHIM — Marker Völkl (VÖLKL), T‑504/09, EU:T:2011:739, paragraph 63, and 29 March 2012, You-Q v OHIM — Apple Corps (BEATLE), T‑369/10, not published, EU:T:2012:177, paragraph 75 and the case-law cited).

44 Consequently, the first plea must be upheld and the contested decision must therefore be annulled in so far as it rejected the applicant’s opposition, without there being any need to examine the other pleas in law put forward by the applicant.

45 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

46 Since EUIPO has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.

1. Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 December 2014 (Case R 1207/2014-5);

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Puma v EUIPO - Gemma Group (Representation d'un felin bondissant) (Judgment) [2016] EUECJ T-159/15 (09 September 2016) URL: http://www.bailii.org/eu/cases/EUECJ/2016/T15915.html Cite as: EU:T:2016:457, ECLI:EU:T:2016:457, [2016] EUECJ T-159/15

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