“The Court said the opponent (Puma) had to prove that there is a “serious risk” of unfair advantage or detriment to repute or distinctive character and it had not established either type of injury.”
Sports and fashion company Puma has lost an appeal before the EU General Court, following an eight-year dispute. The trademark case concerned figurative signs depicting leaping cats, and the judgment was published on May 19 (Case T-510/19).
Puma, based in Germany, filed an opposition to an EU trademark (EUTM) application filed by Gemma Group in February 2013 for “Machines for processing of wood; machines for processing aluminum; machines for treatment of PVC” in class 7. The application depicted a blue cat leaping from left to right.
Puma owns earlier marks for a cat leaping from right to left, registered for a wide range of goods including clothes, accessories and sports equipment.
The opposition was based on Article 8(5) of the EUTM Regulation, which states that a mark shall not be registered where it is identical with, or similar to, an earlier trademark irrespective of the similarity/identify of the goods/services “where, in the case of an earlier EU trade mark, the trade mark has a reputation in the Union … and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.”
The EUIPO rejected the opposition, a finding upheld by the Board of Appeal. But this decision was annulled by the EU Court of Justice in 2018, on the basis that EUIPO had not properly considered three earlier decisions recognizing the reputation of the earlier marks (Case C-564/16).
The case returned to the Board of Appeal, which again found against Puma, saying that the sections of the public targeted by the goods covered by each of the marks would not establish a link between them.
Three Cumulative Conditions
Upholding this decision, the EU General Court said that Article 8(5) requires three cumulative conditions: identity/similarity of the marks at issue; existence of a reputation of the earlier mark; and a risk that the use without due cause of the trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark.
The Court said the relevant sections of the public for the goods covered by each of the marks in this case were different. The Board of Appeal was right to find that there was a certain degree of visual similarity between the marks, but that they were not (as Puma claimed) almost identical. It also accepted the Board’s finding that the two Puma marks had acquired a “very substantial reputation” and “a substantial reputation” (but not an exceptional reputation) for their respective goods.
Given these findings, the Court said the opponent (Puma) had to prove that there is a “serious risk” of unfair advantage or detriment to repute or distinctive character and it had not established either type of injury.
Unfair Advantage and Detriment
Regarding unfair advantage, Puma argued that there was a risk that the image of its mark and its characteristics of excellence, reliability, quality etc. would be transferred to the goods covered by the mark applied for. But the Court said the goods and the sections of the public were completely different. It added that “even if it were accepted that the professional public targeted by the goods covered by the mark applied for are familiar with the earlier marks, it is unlikely that it would consider that the positive values and images conveyed by those marks in relation to the goods which they cover … are transferred to the mark applied for when it is faced with goods of such a different nature, such as machines for processing wood, aluminum and PVC.”
Turning to detriment, the Court said the opponent must show “evidence of a change in the economic behavior of the average consumer of the goods or services for which the earlier mark was registered, consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future.”
Establishing a risk of detriment should be based on an analysis of the normal practice in the relevant commercial sector and other circumstances: it is a high standard that requires more than similarity between the marks and high reputation. In this case, there was no evidence that the image conveyed by the goods covered by the mark applied for was negative, nor any suggestion of tarnishment.
This case contrasts with one involving an opposition to another EUTM application to register a figurative mark comprising the word PUMA (Case T-62/16). The Court said Puma could not rely on that judgment as the earlier marks in this case do not have an exceptional reputation, and the marks at issue are not almost identical.
While Puma can apply to appeal this decision to the Court of Justice, any such application is very unlikely to be accepted.