The European Court issued a decision in case C‑564/16 P, EUIPO v PUMA. This case concerns an attempt by an Italian company to register the following EU trademark for Class 7 – ‘Machines for processing of wood; Machines for processing aluminium; Machines for treatment of PVC’:
Against this mark an opposition was been filed by Puma on the ground of several earlier trademarks for Classes:
- 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, … ’;
- Class 25: ‘Clothing, footwear, headgear; parts and components of footwear, soles, insoles and adjustment soles, heels, boot uppers; … ’;
- 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; … ’;
On top of that, Puma claimed an acquired reputation of its marks on the territory of the EU.
The EUIPO rejected the opposition considering that the goods are not similar and that there is no strong evidence for a reputation of the earlier marks. The reason for this was the fact that Puma claimed its reputation based on older EUIPO decision regarding its trademarks where they were assessed as such with a reputation.
In the following appeal, The General Court stated that the EUIPO was wrong not to take into account the older decisions.
The European court upholds this conclusion stating:
It is also clear from paragraph 30 of the judgment under appeal that, in the three previous decisions, the competent EUIPO bodies had established that one of the earlier marks had been found, ‘on the basis of a large number of items of evidence’, to have a ‘substantial reputation, at least in France’ and that one of them was also considered ‘in the light of the extensive evidence provided,’ to have acquired ‘a substantial reputation through use in the European Union’, enjoying a ‘high degree of distinctiveness as a result of its “long standing and intensive use” and “high degree of recognition”’. The General Court also established that some of those decisions described in great detail the evidence which had led to the conclusion that the earlier marks had a reputation.
In that context, the three previous decisions, in so far as they had recognised the reputation of the earlier marks, were a strong indication, in the opposition proceedings at issue, that those marks could also be regarded as having a reputation for the purposes of Article 8(5) of Regulation No 207/2009, as has already been stated in paragraph 81 above.
Therefore, as has already been held in paragraph 76 above, EUIPO was required to take into account the three previous decisions relied on by Puma and had to provide an explicit statement of its reasoning in the present case in so far as it had decided to depart from the approach adopted in those decisions on the reputation of the earlier marks.