JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
9 September 2016 (*)
(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)
In Case T‑159/15,
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,
the other party to the proceedings before the Board of Appeal of EUIPO being
Gemma Group Srl, established in Cerasolo Ausa (Italy),
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,
THE GENERAL COURT (Seventh Chamber),
composed of M. van der Woude (Rapporteur), President, I. Wiszniewska-Białecka and I. Ulloa Rubio, Judges,
Registrar: A. Lamote, Administrator,
having regard to the application lodged at the Court Registry on 1 April 2015,
having regard to the response lodged at the Court Registry on 22 June 2015,
further to the hearing on 12 April 2016,
gives the following
Background to the dispute
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’.
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.
– 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 25: ‘Clothing, boots, shoes and slippers’;
– 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’.
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.
Forms of order sought
– annul the contested decision;
– order EUIPO to pay the costs.
– dismiss the action;
– order the applicant to pay the costs.
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.