Promising precedent

12th Oct 2018

Earlier decisions can be evidence of reputation, reports Suzan Ure. C-564/16, EUIPO v Puma SE, CJEU, 28th June 2018.

Case Comment Oct 2018 - Promising precedent

C-564/16, EUIPO v Puma SE, CJEU, 28th June 2018

Key points

  • Evidence consisting of earlier decisions must be considered
  • Sufficient reasoning for departing from earlier decisions must be provided
  • There may be more certainty or predictability where previous decisions have been decided, particularly for reputation-based Article 8(5) claims where previous decisions have found a mark to have reputation

In February 2013, Gemma Group filed an EU trade mark application for a figurative mark featuring bounding felines in class 7 for “machines for processing of wood; machines for processing of aluminium; machines for treatment of PVC”, which was subsequently opposed by Puma under Article 8(5) of Regulation (EC) 207/2008. Puma considered that the applied-for mark was similar to its earlier international registrations “with reputation” for two marks covering baggage-related goods, clothing, games and sports equipment in classes 18, 25 and 28.

Appeal history 

For “reasons of procedural economy”, the Opposition Division processed the opposition on the assumption that Puma had the required reputation to support its Article 8(5) claim. Despite this, it failed to find the required “link” between the applied-for and earlier marks, and rejected the opposition. The Board of Appeal (BoA) dismissed Puma’s appeal. Although it agreed there was a degree of visual similarity between the earlier and applied-for marks, having examined the evidence submitted by Puma, it ruled that Puma did not have sufficient reputation. Further, even had sufficient reputation been found, the required “link” did not exist. In reconsidering the evidence, the BoA rejected the earlier decisions submitted as evidence of Puma’s reputation, asserting that it is not bound by earlier decisions. 

On further appeal to the General Court, Puma argued that the principles of legal certainty and sound administration had been infringed by the BoA’s rejection of the evidence relating to Puma’s reputation, that the BoA had not provided its reasons for departing from previous decisions and, further, that it had not requested supplementary evidence to make a full evaluation. 

At the end of the series of appeals, the CJEU ruled that, in relation to reputation, the three conditions (that the marks at issue be either identical or similar, the earlier mark have a reputation, and there be a risk that the use would without due cause take unfair advantage of or be detrimental to the distinctive character or repute of the earlier mark) are cumulative. Further, all relevant factors must be considered, including market share, intensity, geographical scope and size of investment – as per General Motors (case C-375/97, EU:C:1999:408). 

Pertinent endpoint

The notable point of the CJEU’s decision relates to the principles of sound administration. It was held that where earlier EUIPO decisions relating to the reputation of a mark were relied on as evidence, these had to be taken into account, even if a different stance to those decisions is subsequently taken. Explicit reasons for departure from these decisions must be given, and merely stating that EUIPO decisions must be assessed on the merits of each case will not be sufficient reasoning.

Although this outcome does not establish a system of binding precedent for EUIPO decisions, it encourages increased diligence to earlier decisions. The level of consistency that will result remains to be seen, but it is certainly a promising precedent.

Suzan Ure is a Trainee Trade Mark Attorney at HGF Ltd