The General Court was right to consider that EUIPO’s bodies could not satisfy their obligation to state reasons: Puma had raised the argument that the reputation of the earlier marks had been recognised ‘in numerous Office decisions’, the fact remains that the Board of Appeal failed to cite from among the ‘evidence submitted by the opponent’. If the Board of Appeal itself were to reach the conclusion that it could not satisfy its obligation to state reasons, without the evidence which had been lodged in the earlier proceedings before EUIPO, it must be considered, that it would have been necessary for the Board to exercise its power to request the production of that evidence for the purposes of exercising its discretion and carrying out a full examination of the opposition.
Appeal in which the EUIPO asks the Court to set aside the judgment of the General Court of the European Union of 9 September 2016.
The appeal is rejected. The CJEU concluded that the General Court did not disregard Article 76(1) of Regulation No 207/2009 or the principle of sound administration, read in conjunction with Rule 19(2)(c) of Regulation No 2868/95 and Article 8(5) of Regulation No 207/2009, in holding that the Board of Appeal, in circumstances such as those of the present case, the lawfulness of EUIPO’s decisions must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the European Union Courts, and not on the basis of an earlier decision-making practice of EUIPO or of the national offices, had disregarded the principle of sound administration, in particular the obligation to state reasons for its decisions, and thus rendered the decision at issue unlawful.
The General Court did not err in law in concluding that it was incumbent on the Board of Appeal, in accordance with the principle of sound administration, either to provide the reasons why it considered that the findings made by EUIPO in the three previous decisions relating to the reputation of the earlier marks had to be disregarded in the present case, or request that Puma submit supplementary evidence of the reputation of the earlier marks.