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26 September 2018Trademarks

EU General Court upholds Puma TM appeal against EUIPO

The EU General Court today upheld a trademark appeal made by Germany-based sports brand Puma.

In doing so, the court reversed an earlier decision by the European Union Intellectual Property Office (EUIPO).

In November 2012, South Korea-based Doosan Machine Tools applied to register the figurative sign ‘Puma’ at the EUIPO, citing class 7 for goods and services related to machinery.

The following year, in April 2013, Puma opposed the application based on two of its earlier international figurative marks for the word ‘Puma’, one of which also covers class 7. Both of the earlier marks cover a range of other goods, including clothing and sports equipment.

In March 2015, the EUIPO’s Opposition Division rejected the opposition based on the fact that the earlier marks covered goods that were not similar to those covered by the applied-for mark. The Opposition Division also rejected Puma’s argument that the earlier marks had a reputation.

The EUIPO’s Fourth Board of Appeal then rejected an appeal filed by Puma that same year. According to the board, there was a lack of similarity between the goods and, although it agreed that there was a high similarity between the marks at issue, the board said the relevant public would not establish a link between the companies.

While the General Court did side with the EUIPO that the relevant public to which the marks were aimed at were different, the court did say that the earlier marks had a reputation.

According to Puma, the board did not take into account the reputation of the earlier marks in its decision.

Puma argued that it was “impossible” to watch a sporting event that the company sponsored without encountering the earlier marks. In particular, Puma said that the brand is associated with top European football teams and athletes.

According to the General Court, the board “did not specifically examine whether the applicant [Puma] had sufficiently established the reputations of the earlier marks or the strength of such a reputation”.

Puma also argued that the board was wrong to find that the company’s earlier marks had a weak inherent distinctive character.

The General Court supported the argument and said that the board “erred in its assessment relating to the low degree of distinctive character of the earlier marks”.

According to the court, the strength of the reputation of the earlier marks, which the board did not properly assess, could have an effect on whether there is a link between the marks at issue among the public.

The court explained that because Puma’s earlier marks had a reputation, the relevant public for which the later mark was applied “might make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public”.

In addition, the General Court said that even though the two relevant publics for the marks at issue are different, they could still make a connection considering the high degree of similarity between the marks.

As a result, the board’s earlier conclusion that there was no link between the marks in the mind of the relevant public was an error, said the court.

The court told the board to re-examine Puma’s arguments based on an existence of a link between the marks at issue.

The General Court upheld the appeal and annulled the earlier decision. The court ordered the EUIPO to pay its own costs and those incurred by Puma.

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