Puma loses ‘big cat’ TM appeal in long-running dispute

Puma has lost a long-running trademark dispute with an Italian industrial machinery manufacturer after the EU General Court found weaknesses in its case.

In a decision issued yesterday, May 19, the EU General Court upheld the European Union Intellectual Property Office’s (EUIPO) decision to allow Rimini-based Gemma Group to register an EU mark featuring a big cat.

Puma had claimed the logo was “almost identical” to its own trademarks, featuring a leaping figure of the big cat after which the German sports brand is named.

The dispute first began in 2013, when Gemma Group filed to register the mark at the EUIPO, covering machines for processing wood and aluminium, and treating PVC. Puma filed an opposition that same year, citing its international figurative marks first registered in 1983 and 1992.

The EUIPO sided with Gemma Group, despite finding a “certain degree of visual similarity” between the marks, which “both conveyed the same concept of a pouncing feline recalling a puma”. According to the office, Puma had failed to show that Gemma Group was taking “unfair advantage” of its own marks’ reputation, or that it was causing detriment to those brands.

The EUIPO was forced to look again at the case by the EU General Court in 2016 but it again reached the same findings in April 2019. According to its latest decision, Puma hadn’t shown how Gemma Group’s use of the mark for “very specific industrial goods could devalue the image” of Puma’s IP.

The case came again before the General Court, which this time sided with the EUIPO and dismissed Puma’s appeal against the April 2019 decision.

The court backed all of the EUIPO’s major findings, including that the marks had only a “certain degree of visual similarity”, rather than the much stronger resemblance claimed by Puma.

Puma was also refused permission to bring evidence of its marks’ “exceptional” reputation, which would have strengthened its case, as it had not raised those items during earlier proceedings at the EUIPO.

Finally, the court agreed that Puma hadn’t shown why consumers in the market for specific industrial goods would be influenced by the German apparel brand’s reputation for sports-related products.

The court ordered Puma to bear its own costs, as well as those incurred by the EUIPO.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories sent like this straight to your inbox