Puma v. blue cat: Puma lost before the CJEU

The trademark dispute Puma v. blue cat has been waged through all European instances for many years. In the latest decision, Puma loses before the CJEU. Puma unsuccessfully argued that the trademarks were almost identical and that its own Puma cat was exceptionally famous.

Puma v. blue Cat: Background to the case

This case about similarity and likelihood of confusion between the well-known Puma cat and the Gemma Group’s blue cat has been going through all European instances for years. It concerns the trademark application of a very similar jumping cougar, all instances also found a certain similarity between the trademarks.

Why, then, was it not decided that there was a likelihood of confusion, which Puma claimed?

Because the goods and services claimed are, at first sight, very different; and for quite different goods and services an identical trade name can be used several times (see case-law Sherpa).

In this protracted trademark dispute, however, the goods and services are not easy to assess either. For the Gemma Group is indeed a company in the sports sector, but had claimed “machines” of Nice Class 7 with the blue jumping cat. Gemma claimed that they were diversifying their product range; Puma argued that they were trademarks outside the actual presence market – incidentally a business practice that many companies follow, including Puma.

But on the issue of likelihood of confusion, this fact is of no use; the goods and services specifically claimed by Gemma are not similar to those claimed by Puma. Puma could therefore only claim likelihood of confusion if the similarities were very great or its own fame played a role.

Timing of the trademark conflict:

April: Gemma Group’s blue cat registered as a figurative mark
July 2013: opposition by Puma against the grant
March 2014: the opposition division rejected the opposition in its entirety
7 May 2014: Puma filed an appeal against the Opposition Division’s decision with EUIPO under Articles 58 to 64 of Regulation 207/2009.
19 December 2014: the Fifth Board of Appeal of EUIPO dismissed Puma’s appeal
9 September 2016: on appeal before the CFI, the CFI upheld Puma and annulled the decision of the EUIPO Board of Appeal (decision of 19 December 2014); EUIPO appealed to the ECJ
28 June 2018: the ECJ rejects EUIPO’s appeal, upholds Puma’s appeal.

De facto, the ECJ thus ruled (C:2018:509) that the Board of Appeal should have taken into account in the contested decision earlier EUIPO decisions relating to the Puma cat, which also already dealt with the correct reputation of the Puma cat as the earlier mark.

Puma v. blue Cat: new proceedings since 2018

As the earlier decision of 19 December 2014 had been finally annulled, the appeal against the decision of the Opposition Division was given a new file number (R 2057/2018-4) and was re-examined by the Fourth Board of Appeal. It came to the decision of 30 April 2019, in this case the contested decision. In that decision, the Board of Appeal essentially confirmed the findings made by the Opposition Division in the decision of 10 March 2014 and rejected Puma’s objections.

In short, the Board of Appeal found a certain degree of visual similarity “despite obvious differences” and that the figurative elements of the marks at issue referred to the same concept – namely a jumping puma. Nevertheless, the marks are by no means identical. Moreover, a phonetic comparison of these marks is not possible.

Despite this certain degree of similarity, the Board of Appeal found no likelihood of confusion because Gemma Group’s Blue Cat was registered for a different Nice Class and also different goods than the Puma Cat.

Puma therefore argued that the marks were almost identical and that its own Puma cat was exceptionally famous.

Puma v. blue cat: Puma loses

The CJEU, however, rejected Puma’s appeal and objections.

In view of the visual differences and the impossibility of comparing the marks at issue phonetically, the Board of Appeal had rightly held that these marks were not identical for the purposes of its examination. The Court emphasised that a visual similarity of conflicting signs does not necessarily lead to a likelihood of confusion, nor does it lead to a visual “near” identity.
This was because Article 8(1)(b) of Regulation 207/2009 made the existence of a likelihood of confusion dependent on the similarity of the signs (visually, phonetically and conceptually and also in relation to the goods and services claimed) and did not mean that the degree of similarity had to be high.

Fame of Puma

Puma’s reference to the exceptional fame of its own Puma cat and brand and the damage to its own reputation (damage to the reputation of the Puma brand) was also rejected by the ECJ. This is because Puma raised this objection too late in the proceedings, specifically only at the CFI hearing in September 2016.

However, it is not possible to raise facts before the European Court that have not yet been raised before the instances of the EUIPO. This is because the purpose of an action before the General Court is to review the legality of decisions of the Boards of Appeal of EUIPO (within the meaning of Article 65 of Regulation 207/2009 (now Article 72 of Regulation 2017/1001)).

However, even this factual decision is not clear-cut in this trade mark dispute. This is because Puma believes that it has already presented evidence of its own fame before the Board of Appeal, including a market study concerning France in French. However, since evidence must be submitted in the language of the proceedings, the Board of Appeal had decided that the documents not translated into the language of the proceedings could not be taken into account. Rightly so, the CFI had already ruled in the 2016 proceedings and had nevertheless ruled in favour of Puma at that time. The CJEU ruled in 2016 that the Board of Appeal should have invited Puma to submit additional evidence of the reputation of the earlier marks.

In the current proceedings form 19 mai 2021, however, the CFI ruled that Puma had not been able to prove that the image of the earlier marks could be affected by the use of the mark applied for; the Board of Appeal rightly so decided.

Although it could not be ruled out – as the CFI acknowledged – that the mark applied for might remind the relevant public of the earlier marks, despite the differences between the goods in question, the CFI dismissed Puma’s action in its entirety. This is because a serious risk of detriment to the distinctive character of the earlier marks also requires a higher standard of proof, the court emphasised, and this was not the case here.

Puma v. blue cat: Puma loses – at least for the time being.

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