EUIPO decision on reputation of an EUTM: an evidentiary presumption (Puma/EUIPO)?

Puma often invokes the broader protection for trademarks with a reputation: protection against dilution, damage to reputation, and freeriding. Of course Puma will need to prove that its left-jumping cat marks indeed have a reputation. Yet is it really necessary that this evidence is provided in each and every procedure? In 2010 and 2011 EUIPO already decided three times that the Puma device mark has a reputation with a significant part of the relevant public, in full: “by a significant part of the public concerned by the goods or services covered by that mark, within a substantial part of the territory of the European Union” (HvJ: Iron & Smith).
 
In 2013 Gemma Group applied for an EU Trademark fort his right-jumping animal in blue lining. Puma referred to three prior EUIPO decisions and set out the substantive content of these decisions in the notice of opposition in the language of the case. Is that sufficient, or should Puma have submitted all evidence again in full?
 
Yesterday the Court of Justice upheld this practice in the case Puma/EUIPO (C-564/16). The opponent (Puma) is free, in principle, to choose the form of evidence which it considers useful to submit to EUIPO. EUIPO’s assessment of the reputation of the older in other inter partes proceedings, may be relied on in that context as evidence in support of the reputation of that earlier mark, in particular where they are identified in a precise manner and their substantive content is set out in the notice of opposition in the language of the case.
 
Apart from the practical side there is also a formal side. The Court of Justice acknowledges that EUIPO must take into account its assessment of the reputation of the earlier mark in other decisions if these are specifically referred to. So now the ‘decision-making practice’ has an official status following from the principle of sound administration. The prior decisions may concern a different trademark application, buth the assessment regarding the reputation of the earlier mark is made independent of the opposed mark. The assessment of the reputation is an assessment in fact and may therefore serve a purpose beyond the scope of the opposition concerned.
 
Such assessment of the reputation will therefore be a reference point in other, comparable proceedings: the Court of Justice acknowledges that EUIPO must provide an explicit statement of their reasoning for departing from such previous decision. For example: if the market position of the goods under the older trademark have materially changed, or if the trademark that had a reputation at that time has hardly been on the market ever since. In each opposition there will be room for a deviating custom made decision, as long as EUIPO will provide an explicit statement of their reasoning.
 
In practice this comes down to an assumption of reputation, which is largely in the interest of trademark owners like Puma, at least: in comparable opposition proceedings before EUIPO (and I assume: in cancellation proceedings as well). However, having a reputation is not enough. In order to win, the owner of the older trademark must show that the criteria for dilution, reputation damage or freeriding are met. In the matter of Puma, EUIPO will now assess whether the right-jumping cat can be registered as a trademark.
 
Maarten Haak