Judgment of the General Court (Sixth Chamber) of 10 March 2021.Puma SE v European Union Intellectual Property Office.EU trade mark – Opposition proceedings – Application for the EU word mark PUMA-System – Earlier EU figurative marks PUMA – Relative ground for refusal – Detriment to reputation – Article 8(5) of Regulation (EC) No 207/2009 (now Article 8(5) of Regulation (EU) 2017/1001).Case T-71/20.

Judgment of the General Court (Sixth Chamber) of 10 March 2021 –Puma v EUIPO – CAMäleon (PUMA-System)

(Case T‑71/20)

(EU trade mark – Opposition proceedings – Application for the EU word mark PUMA-System – Earlier EU figurative marks PUMA – Relative ground for refusal – Detriment to reputation – Article 8(5) of Regulation (EC) No 207/2009 (now Article 8 (5) of Regulation (EU) 2017/1001))

1. EU trade mark – Appeals procedure – Action before the EU judicature – Procedural role of the Office – Right of the Office, although designated as the defendant, to support the applicant’s claims – Functional independence of Boards of Appeal and their members

(Rules of Procedure of the General Court, Art. 172; European Parliament and Council Regulation 2017/1001, Art. 166(7))

(see para. 16)

2. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation – Protection of well-known earlier mark extended to dissimilar goods or services – Conditions

(Council Regulation No 207/2009, Art. 8(5))

(see paras 21, 22)

3. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation – Protection of well-known earlier mark extended to dissimilar goods or services – Conditions – Similarity of the marks concerned – Criteria for assessment – Composite mark – Determination of the dominant elements

(Council Regulation No 207/2009, Art. 8(5))

(see paras 26, 27)

4. EU trade mark – Procedural provisions – Decisions of the Office – Observance of the rights of the defence – Scope of the principle

(European Parliament and Council Regulation 2017/1001, Art. 94(1))

(see para. 34)

5. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation – Protection of well-known earlier mark extended to dissimilar goods or services – Word mark PUMA-System and figurative marks PUMA

(Council Regulation No 207/2009, Art. 8(5))

(see paras 40, 52, 56, 80, 83, 86, 90, 95, 96)

6. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation – Protection of well-known earlier mark extended to dissimilar goods or services – Conditions – Link between the marks – Criteria for assessment

(Council Regulation No 207/2009, Art. 8(5))

(see paras 45, 46, 65-67, 70, 73, 85)

7. EU trade mark – Procedural provisions – Statement of reasons for decisions – First sentence of Article 94(1) of Regulation 2017/1001 – Scope identical to that of Article 296 TFEU

(Art. 296 TFEU; European Parliament and Council Regulation 2017/1001, Art. 94(1), first sentence)

(see para. 57)

8. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation – Protection of well-known earlier mark extended to dissimilar goods or services – Proof to be adduced by proprietor – Future, non-hypothetical risk of unfair advantage or damage

(Council Regulation No 207/2009, Art. 8(5))

(see para. 68)

9. EU trade mark – Decisions of the Office – Principle of equal treatment – Principle of sound administration – EUIPO’s previous decision-making practice – Principle of legality – Need for a strict and complete examination in each particular case

(European Parliament and Council Regulation 2017/1001)

(see para. 91)

Re:

Action brought against the decision of the First Board of Appeal of EUIPO of 27 November 2019 (Case R 404/2019-1), relating to opposition proceedings between Puma and CAMäleon Produktionsautomatisierung.

Operative part

The Court:

1. Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 27 November 2019 (Case R 404/2019-1) to the extent that the Board of Appeal dismissed the appeal brought by Puma SE in so far as the application for registration of the word sign PUMA-System as an EU trade mark covers the goods and services in Classes 7, 9, 16 and 42 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, corresponding, for each of those classes, to the following description:

–

Class 7: ‘power screwdriver’;

–

Class 9: ‘computer hardware’, ‘computers’, ‘data-processing equipment and computers’, ‘computer peripheral devices’, ‘peripherals adapted for use with computers’, ‘magnetic and optical data carriers’, ‘printers for computers’, ‘heatdetectors’ and ‘measuring instruments’;

–

Class 16: ‘catalogues relating to computer software’, ‘computer software operating manuals’, ‘instruction manuals’, ‘instruction manuals for personal computers, mobile telephones and palmtop computers’ and ‘books’;

–

Class 42: ‘updating and maintenance of computer software and programs’, ‘configuring computer hardware using software’, ‘configuration of computer networks by software’, ‘configuration of computer software’, ‘computer hardware and software consultancy’ and ‘computer software technical support services’.

2. Dismisses the action as to the remainder;

3. Orders Puma and EUIPO each to bear their own costs.