Puma loses appeal over rival’s chevron trademark
EUIPO decision that rival brand’s figurative mark is not likely to confuse was correct, says General Court | Long-running attempt to oppose competitor’s brand fails | See Puma’s pleas and court’s reasoning.
German sportswear brand Puma has failed to convince the EU’s General Court to annul an EU Intellectual Property Office (EUIPO) decision that rejected its opposition to a rival’s trademark.
The dispute began in May 2019, when Puma filed an opposition against trademark registrations granted to US-based Brooks Sports, alleging infringement of its own two earlier figurative marks, registered in 1978 and 2010 respectively.
Brooks, also known as Brooks Running, obtained registration of a figurative mark in December 2018 with the World Intellectual Property Organization (WIPO), number 1 441 912, designating the EU, for goods in Classes 18 and 25.
The mark at issue represented “a band with an acute angle” found on Brooks’ running shoes and other apparel.
Puma’s German figurative mark, registered in May 1978 under the number 971 406, covers goods in Class 25 corresponding to ‘shoes, in particular sports and leisure shoes’.
And its January 2010 EU figurative mark, registered under the number 8 461 469, covers goods in Class 18 and 25.
‘No likelihood of confusion’
The EUIPO’s Fourth Board of Appeal had dismissed Puma’s earlier appeal against the Opposition Division’s decision of March 2021 in respect of goods other than ‘footwear’, which Puma appealed in May of the same year.
The board dismissed this appeal, finding no likelihood of confusion (according to Article 8(1)(b) of Regulation 2017/1001) “on account of the visual dissimilarities between the signs at issue, as those signs were not capable of being compared phonetically and conceptually”.
And in light of those dissimilarities, the board found that one of the conditions set out in Article 8(5) had not been satisfied.
The board likened it to a 2016 decision, Puma v OHIM – Sinda Poland (Representation of an animal), saying there was “no contradiction” with that ruling.
In October 2022, the EUIPO lodged an application “for a declaration that there was no need to adjudicate on part of the action in so far as the protection of the international registration had been restricted, on August 31, 2022, to only ‘footwear’ in Class 25.”
It said the opposition had “become devoid of purpose following the restriction of protection to those goods alone. To that extent, there is therefore no longer any need to adjudicate.”
Puma’s appeal: ‘Consumer doesn’t pay attention to details’
Puma appealed on three grounds.
First, it alleged “failure to identify the relevant public”, contesting that the decision “does not make any reference to the relevant public or that public’s level of attention”.
The company argued that the board did not take into account either the relevant public’s level of attention or the category of goods at issue, “which are mass consumption goods that are usually impulse purchases, the price of which is generally affordable and which are aimed at the general public displaying an average level of attention.”
“In that regard, [Puma] submits that the consumer, who is normally attentive, does not pay attention to details which are difficult to notice and often does not have the opportunity to see both marks side by side when deciding to make a purchase, with the result that he or she must rely on his or her imperfect recollection of them,” the court document said.
Second, Puma alleged that the visual comparison of the signs at issue was incorrect, and argued that the board had failed to assess the distinctive character of the earlier marks.
Puma disagreed with the board’s finding that “the earlier marks are simple curvilinear shapes consisting of variations of simple geometric shapes”, contesting that the sign which constitutes the earlier marks “represents a specific and thought-out technical concept” and that the “inclination and composition of the band are not a coincidence or the result of a pre-existing figure”.
Third, Puma contended that “when the marks at issue are placed one on top of the other it is possible to notice that only an ending has been added to the earlier mark, just as a syllable is added to a word mark.”
Dissimilarity between the marks
In the decision delivered in Luxembourg yesterday, March 22, the General Court rejected Puma’s appeal and ordered it to pay costs.
Part of the court’s reasoning to reject the appeal was based on dissimilarity between the marks, and an acknowledgment of Puma’s reputation. It cited a 2019 decision, Volvo Trademark v EUIPO – Paalupaikka (V V-WHEELS), to illustrate its point.
“It is only if there is some similarity, even faint, between the marks at issue that it is necessary to carry out an overall assessment in order to ascertain whether, notwithstanding the low degree of similarity between them, there is, on account of the presence of other relevant factors such as the renown or reputation enjoyed by the earlier mark, a likelihood of confusion or a link made between those marks on the part of the relevant public,” said the court.
It added that Puma’s second plea, alleging infringement, could not therefore be upheld.
Finally, the court concluded that the third plea “alleging infringement of the principles of legal certainty, of equal treatment and of sound administration, must be rejected.”
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