PUMA trademark has its limits

The scope of protection of the reputed PUMA trademark has its limits

• This dispute between Puma SE and DN Solutions over the use of PUMA for goods in Class 7 has been ongoing for a decade
• The General Court was not convinced by Puma’s argument that there was no airtight distinction between the business sectors concerned
• It concluded that there was no link between the marks in the mind of the relevant public

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The scope of protection of the PUMA trademark has been a key question in a battle that has been going on for a decade, with the General Court rendering its latest decision on 21 December 2022 in Puma SE v European Union Intellectual Property Office (EUIPO) (Case T‑4/22).

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Background

In 2012 DN Solutions Co Ltd (South Korea) filed an application for registration of the figurative trademark shown below as an EU trademark:

The application covered various machinery items in Class 7. Puma SE (Germany) fi led an opposition based on the earlier trademark shown below, covering goods in Classes 18, 25 and 28 and protected in various EU member states:

Puma claimed that use of the mark applied for would be detrimental to the reputation of its earlier trademark under Article 8(5) of Regulation 207/2009 (now Regulation 2017/1001). The Opposition Division of the EUIPO rejected the opposition on the ground that the applicant had not demonstrated the alleged reputation.

Puma appealed to the Board of Appeal of the EUIPO, without success. In its decision of 4 December 2015, the Board of Appeal stated that, even assuming that reputation had been proved, the relevant public would not establish any link between the marks at issue.

Puma appealed, and by a judgment of 26 September 2018 (Case T‑62/16), the General Court concluded that the Board of Appeal had not properly taken account of the degree of reputation and the inherent distinctive character of the earlier mark. The case was remitted to the EUIPO, which upheld the opposition.

DN Solutions appealed. The Board of Appeal upheld the appeal, finding that, despite the very high degree of reputation and distinctive character of the earlier mark, Puma had not demonstrated that the public would establish a link between the marksat issue.

Puma brought the matter before the General Court, claiming again that the public would establish a link. The court has now rendered its decision.

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Decision

The court noted that the possible existence of a link in the mind of the relevant public between the two PUMA marks was a precondition for the application of Article 8(5). The possible existence of a link must be assessed globally, taking into account all relevant factors.

Puma submitted that the Board of Appeal had relied predominantly on the difference between the goods at issue, finding themtotally dissimilar and without any point of contact, and without taking sufficient account of other relevant factors. The court disagreed, finding that the Board of Appeal’s conclusion that there was no link between the marks was based not only on the dissimilarity between the goods, but also on:

• the degree of similarity between the signs at issue;
• the strength of the earlier mark’s reputation;
• the lack of evidence adduced by Puma SE; and
• the relevant public.

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The goods covered by the marks at issue were found to be completely different and to belong to radically distinct business sectors. The court stated that, in some cases, there may be a link between marks in the light of the relationship between the relevant factors, even though there is no link between the goods.

Puma had argued that there was no airtight distinction between the business sectors of machinery and clothing, in view of promotional items as well as the possibility that Puma might diversify its production by extending to machinery. The court was unconvinced, finding that a possible collaboration regarding machinery located in industry buildings and a mark with a reputation for sportswear would be highly unlikely. Thus, the court confirmed that the goods belonged to completely different business sectors, and that a connection would not be made between the marks at issue.

Puma had also submitted that DN Solutions’ use of a trademark in a typeface that was almost identical to Puma’s unique mark would cause dilution through blurring and constituted a clear case of parasitism. The court, however, found that these allegations were unjustified. It concluded that there was no link in the mind of the relevant public between the marks at issue and, therefore, the use of the mark applied for would be unlikely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier PUMA mark. As one of the cumulative conditions under Article 8(5) was not satisfied, Puma’s opposition was rejected.

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Lisbet Andersen

Author | Partner

lan@aumento.dk

Aumento Law Firm

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