CMS Italy (fig.) v. PUMA SE (T-491/24, General Court of the European Union, 22 October 2025)
The judgment in CMS Italy (fig.) v. PUMA SE constitutes a significant development in the interpretation of Article 8(5) of Regulation (EC) No 207/2009, concerning the protection of reputed trade marks within the European Union. The General Court’s reasoning clarifies not only the substantive contours of “reputation” under EU trade mark law but also the procedural obligations of the European Union Intellectual Property Office (EUIPO) in opposition proceedings, particularly its duty to consider the best-case scenario for the party whose arguments are rejected.
The dispute arose from an opposition filed by Puma SE against an application for the figurative mark CMS Italy, submitted by the Italian company CMS Costruzione macchine speciali SpA. Puma relied on its earlier international figurative marks depicting the iconic leaping feline, asserting that their extensive commercial use and recognition in the sportswear and footwear sectors conferred upon them a very high degree of reputation. The opposition was grounded on Article 8(5) of Regulation No 207/2009, which prohibits the registration of a mark similar to a reputed earlier mark where such use would take unfair advantage of, or be detrimental to, its distinctive character or repute, even in the absence of similarity between the goods or services concerned.
After a complex procedural history involving multiple appeals, the EUIPO’s Fifth Board of Appeal, in its decision of 4 July 2024, acknowledged that Puma’s earlier marks possessed “at least an average degree of reputation” in certain Member States but nonetheless dismissed the opposition. The Board found no sufficient link between the marks and, consequently, no injury to the reputation of the earlier marks. Puma challenged this assessment before the General Court, contending that the EUIPO had failed to evaluate properly the strength of its marks’ reputation and the implications of that reputation for the overall analysis.
In its judgment of 22 October 2025, the General Court annulled the Board of Appeal’s decision, holding that the EUIPO had committed an error of law by not expressly considering the “best-case scenario” for the losing party, here, Puma. The Court observed that when the EUIPO employs indeterminate expressions such as “at least” or “at most” in relation to the degree of reputation, it is under a procedural duty of diligence to test explicitly the strongest version of the opponent’s claim before reasoning a fortiori to less favourable scenarios. The failure to do so, the Court held, undermines the analytical soundness of the overall assessment of the existence of a link and of potential injury to reputation.
This principle, now articulated as a requirement to take into account the “best-case scenario” for the losing party, serves as a specific manifestation of the EUIPO’s broader duty of diligence. It ensures that the administrative assessment is not merely plausible but demonstrably comprehensive, encompassing the full spectrum of factual and legal possibilities advanced by the parties. The Court emphasized that procedural fairness in trade mark opposition proceedings demands such explicit consideration, particularly where the existence and degree of reputation form decisive factors in the outcome.
Moreover, the Court reaffirmed that while the EUIPO is not invariably required to quantify reputation with mathematical precision, it cannot rely on vague formulations unsupported by explicit analytical reasoning. In the present case, the Board’s conclusion that the earlier marks had “at least an average degree of reputation” was deemed insufficiently reasoned, as it failed to clarify whether the evidence submitted might justify a finding of a higher degree of renown. The General Court further observed that implicit or inferential reasoning cannot substitute for an express consideration of the best-case scenario, which must appear clearly from the decision’s reasoning.
Consequently, the General Court annulled the contested decision in its entirety. The matter was remitted to the Board of Appeal for a fresh assessment consistent with the Court’s guidance. Importantly, the Court declined to substitute its own assessment for that of the EUIPO, recalling its limited jurisdiction under Article 65(2) of Regulation No 207/2009 to review legality rather than re-evaluate factual determinations.
The CMS Italy (fig.) v. PUMA SE judgment thus extends beyond the specific dispute between the parties. It refines the procedural architecture of EU trade mark law by establishing an express obligation on EUIPO adjudicating bodies to consider the opponent’s claims under the most favourable factual hypothesis before dismissing them. This doctrinal clarification enhances transparency and predictability in opposition proceedings and reinforces the evidentiary and analytical rigour expected in the assessment of reputation and its possible injury.
In doctrinal terms, the ruling integrates the notion of procedural diligence with substantive principles of trade mark protection, underscoring that the evaluation of a reputed mark’s strength cannot be abstract or conditional. It must be contextually and explicitly reasoned, ensuring that findings of “reputation” and “injury” rest on an articulated and balanced analysis. The decision also exemplifies the Court’s continued insistence on procedural precision as a cornerstone of administrative legality within the EU intellectual property system.
Ultimately, the case reaffirms that in the field of trade mark law, where reputation operates as both an economic and symbolic asset, legal reasoning must demonstrate a degree of care commensurate with the commercial value at stake. The “best-case scenario” principle introduced in this judgment is therefore likely to influence future EUIPO practice and to resonate across other areas of administrative adjudication involving reputational or goodwill-based rights.
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