Appeal brought on 7 November 2016 by European Union Intellectual Property Office against the judgment of the General Court (Seventh Chamber) delivered on 9 September 2016 in Case T-159/15: Puma SE v European Union Intellectual Property Office
(Case C-564/16 P)
(2017/C 086/07)
Language of the case: English

Parties
Appellant: European Union Intellectual Property Office (represented by: D. Hanf, D. Botis, Agents)
Other party to the proceedings: Puma SE

Form of order sought
The appellant claims that the Court should:
—
Set aside the Judgment under appeal in its entirety;
—
Order Puma SE to bear the costs incurred by the Office.

Pleas in law and main arguments
First, the General Court disregarded the Office’s procedural position and obligations in inter partes proceedings before the Office, infringing Article 76(1) of Regulation 207/2009 (1) and the principle of sound administration, in that it found that Puma ‘duly relied on’ the three previous Office decisions for the purposes complying with its duty to show the reputation of the Puma marks (Rule 19(2)(c) of Regulation No 2868/95 (2)). In doing so, the General Court accepted that this duty can be discharged by means of general and unspecified references to documents submitted in prior opposition proceedings involving different parties — and to which the other party to the proceedings at hand had not been a party.
Since the Office cannot ignore, but rather needs to respect, the other party’s right to be heard (Article 75 of Regulation 207/2009), the General Court’s finding necessarily obliges the Office to take on an active role in the inter partes proceedings. This undermines the adversarial nature of these proceedings, the Office’s corresponding duty of neutrality, as well as the sound administration of these proceedings.
Second, in qualifying the previous decisions of the Office invoked by Puma as a ‘decision-making practice’ of the Office, the General Court misconceived both the adversarial nature of the inter partes proceedings and the notion of ‘reputation’ within the meaning of Article 8(5) of Regulation 207/2009. This twofold misconception resulted in a corresponding twofold breach of the principle of sound administration.
On the one hand, the prerequisite for the very application of the Technopol-case law is not fulfilled in the present — inter partes — case because that case law on the Office’s duty to inquire ex officio the relevant facts of the case to decide only relates to ex parte proceedings. In any event, given the inevitable absence of any specific ‘decisionmaking practice’ of the Office with respect to the reputation of the Puma marks, no duty could possibly exist to state the reasons for not applying the findings made on the Puma marks’ reputation in previous decisions to the situation in the case at hand.
On the other hand, the General Court could not — without infringing the adversarial principle governing inter partes proceedings laid down in Article 76(1) of Regulation 207/2009 — infer from the principle of sound administration the Board of Appeal’s additional duty to invite, on its own motion, Puma to submit supplementary evidence of the reputation it claimed of its Puma marks.
Third, the General Court’s finding of the Office’s duty to invite, on its own motion, Puma to submit supplementary evidence moreover infringed Article 76(2) of Regulation 207/2009 (applicable pursuant to Rule 50(1) of Regulation No 2868/95) which exclusively applies to submissions made by the parties on their own motion.
(1)  Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark
OJ 2009, L 78, p. 1
(2)  Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark
OJ 1995, L 303, p. 1

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