The CFI ruled in the case of Puma v. Puma System on an allegedly erroneous decision by the Board of Appeal. The core issue was whether a third-party trademark registration for very distant and remote goods dilutes a famous trademark and brand like Puma – even automatically?
In July 2017, the registration of an EU trademark was published for the word mark ‘Puma-System’ – registered by CAMäleon Produktionsautomatisierung GmbH (Germany) for very remote goods and services, namely machines for working and processing wood and metal and the corresponding software and services. Although this trademark registration claimed very remote goods and services than those claimed by Puma SE (Germany) in the sports sector, Puma opposed the trademark registration by relying on its own very famous earlier trademark and brand PUMA and invoked Article 8(5) of Regulation No. 207/2009.
However, although similarity between the marks was found, the Board of Appeal largely rejected Puma’s opposition; only for a few goods from Nice Class 9 was the opposition upheld.
Puma did not agree with this and brought an action before the European Court of Justice of First Instance(CFI) to have the decision set aside. Puma alleged that the Board of Appeal had violated the principle of sound administration and the duty to state reasons in its decision, and had also ruled incorrectly on the question of distinctiveness and also on the question of whether the reputation of the earlier marks had been taken unfair advantage of.
This has now been decided.
Extraneous TM registration for very distant goods / services
The similarity of the signs and the exceptional reputation of the earlier marks did not require that there be a connection between the goods and services in question, Puma argued, and also referred to EUIPO decisions from 2018 and 2019 that had even recognized a connection between the opposing marks.
In the present case, however, the Board of Appeal had ruled that the reputation of the earlier marks and the similarity of the signs at issue were not sufficient in themselves to establish the existence of one of the types of detriment listed in Article 8(5) of Regulation No 207/2009.
Was the reputation of the earlier famous mark exploited?
The CFI emphasized that Art. 8(5) of Regulation No. 207/2009 ensured the protection of a well-known mark against any application for an identical or similar mark which might be detrimental to its image. This even applies, the CFI confirmed Puma’s arguments, if the goods covered by the mark applied for are not similar to those for which the earlier mark is registered.
However, three cumulative conditions must be met for this to be the case, the court added:
- That the opposing marks must be identical or similar,
- that the earlier opposition mark must have a reputation, and
- that there must be a likelihood that the use of the mark applied for will take unfair advantage of the distinctive character or the repute of the earlier mark.
Accordingly, the CFI reviewed these points and actually reached a different decision than the Board of Appeal with respect to the similarity of the marks. The signs in question showed a high degree of phonetic and conceptual similarity, the CFI ruled.
CFI recognizes higher degree of similarity
Nevertheless, this does not lead to the annulment of the decision, the CFI explained, because a more precise finding of the similarity of the signs had no influence on the outcome of the contested decision.
Decision of the Board of Appeal
In particular, the CFI summarized that the Board of Appeal had indeed found, taking into account the high reputation of the earlier marks, that the use of the mark applied for without due cause would take unfair advantage of the distinctive character and the repute of the earlier marks in relation to the goods referred to in Nice Class 9. However, for the other goods and services (of Nice Classes 7, 16 and 42 and other parts of Nice Class 9), Puma had not, according to the Board of Appeal, shown why there could be a link between the marks for consumers. Consumers were two completely different target groups and had no connecting factor between the marks.
Error of the Board of Appeal?
The fact that a mark applied for and an earlier mark are similar and that the earlier mark enjoys an exceptional reputation is not automatically sufficient to affirm the existence of a link between those marks, the court ruled, but this is always a case-by-case decision.
In fact, however, the Board of Appeal had carried out an incomplete examination of the goods and services covered by the mark applied for in its assessment of whether there was a link between the conflicting marks, the CFI ruled. It had, in fact, focused its examination on the highly specialized goods targeted at industry professionals covered by the mark applied for, the court explained, while disregarding the fact that the contested mark also covers a number of goods and services in Classes 9, 16 and 42 that are not exclusively targeted at a specialized public, but also affect the general public.
However, Puma referred in vain to previous decisions of the EUIPO, which had even recognized a connection between the opposing marks. That was not relevant in the present case, the CFI ruled, since they concerned marks directed at quite different relevant publics (directed at the general public and using the same distribution channels). In the present case concerning the Puma-System trade mark application, the Board of Appeal had correctly set out the decisive reasons for its conclusion regarding the lack of connection between the earlier marks and the trade mark applied for, in so far as the trade mark applied for is intended for goods directed at professionals in the industry.
Nevertheless, the higher degree of similarity found by the CFI compared to the Board of Appeal must be taken into account. Nor did the Board of Appeal consider Puma’s argument that, given the exclusive nature of the earlier marks, use of the mark applied for would dilute their ability to identify a single undertaking and deprive them of their attractiveness.
Judgment of the ECJ: partial success for Puma
In its final judgment, the CFI partially partial dismissed Puma’s appeal against the Board of Appeal’s decision, but at the same time it was a partial success for Puma. The CFI extended the rejection of the contested trademark registration to cover a wider range than the few goods in Nice Class 9.
The contested decision should be annulled, the CFI ruled, insofar as it rejected the opposition to the extent that the mark applied for covers the following goods and services:
- Class 7: ‘power screwdriver’;
- Class 9: ‘computer hardware’, ‘computers’, ‘data-processing equipment and computers’, ‘computer peripheral devices’, ‘peripherals adapted for use with computers’, ‘magnetic and optical data carriers’, ‘printers for computers’, ‘heatdetectors’ and ‘measuring instruments’;
- Class 16: ‘catalogues relating to computer software’, ‘computer software operating manuals’, ‘instruction manuals’, ‘instruction manuals for personal computers, mobile telephones and palmtop computers’ and ‘books’;
- Class 42: ‘updating and maintenance of computer software and programs’, ‘configuring computer hardware using software’, ‘configuration of computer networks by software’, ‘configuration of computer software’, ‘computer hardware and software consultancy’ and ‘computer software technical support services’;
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