Are EUIPO Trade Mark Examiners and the Boards of Appeal Bound by Precedent Decisions?

Abstract

Abstract Are EUIPO examiners and appeal bodies bound by previous decisions of the office they belong to? Before the decision in Puma was issued, there was a succession of frequently referred to ECJ precedents which were apparently disregarded. EUIPO offices had been considered bound to the sole law (and, where precedents are concerned, only to ECJ case-law). However, after Puma, pursuant to the administrative duty to act consistently and to state the grounds on which decisions are based, it is concluded that relevance of EUIPO precedents (and of the ‘Trade mark guidelines’, as far as they are based on them) should not be set aside simply because they are not formal sources of law. Instead, they should be appreciated as rules of administrative procedure. In this sense, precedent EUIPO decisions should be recognised as more than just a persuasive power (which they share with all other relevant ‘precedents’ such as Member States case-law or offices’ decisions). In fact, it should be acknowledged that they also have a role within the duty of motivation of administrative decisions. So if EUIPO decides to depart from a precedent or from its ‘Trade mark guidelines’, explicit and detailed motivation of such departure is required. Even if the EUIPO is under a general duty to take into account the decisions already taken in respect of similar applications, a specific duty to take into consideration a given precedent requires that such precedents are duly reported with all relevant elements to be taken into consideration (factual context and legal reasoning) within the decision to be issued.