Background of the case

On 1 June 2017 CAMäleon Produktionsautomatisierung GmbH filed an application for the registration of an EU trade mark for the word sign PUMA-System in Classes 7, 9, 16 and 42.

Following this application, Puma SE filed an opposition on 24 October 2017 based on two EUTMs that contained the term PUMA in Classes 18, 25 and 28 relying on the reputation that both earlier marks have in the European Union, thus alleging the risk of infringement of Art.8.5 of the EU Trade Mark Regulation. However, on 17 December of 2018 the Opposition Division rejected it in its entirety the opposition as it found unlikely that a link would be established between the signs by the general public.

Puma appealed the decision on 27 November 2019. The Board of Appeal upheld the appeal in regards to some of the goods and services which were applied for in Class 9. It was recognised that the two earlier marks have a very high reputation in relation to goods and services from Classes 18, 25 and 28, and understood that a proximity can be found between those goods and some those applied for from Class 9. So, the use without due cause would take unfair advantage of the distinctive character and reputation of the earlier marks.  Yet, that link between the goods and services at stake was not found in regards to the rest which were applied for.

Concerning Art. 8.5 of the EUTMR, even though the main function of the mark is to serve as an indication of a commercial origin for the public, a mark also has the capability to carry a certain message about the characteristics and qualities that are inherent to it. Thus, Art.8.5 protects the value which is generally associated to the reputation of the mark, making sure that no unfair advantage is taken from this condition and that the mark is not adversely affected by the use from third parties. As stated by the General Court, the case-law requires that the general public has to establish a link between the earlier and the later mark, without needing to confuse them.

Decision of the General Court

The General Court has stated that the assessment of the link between the marks must be done globally and taking into account all relevant factors. In this sense, it is possible that both marks are similar to a high degree so that the relevant public overlaps, but being the goods and services so dissimilar that it would be very rare for the general public to think about the earlier mark. The General Court also explains that the opposite situation may occur, where an earlier mark has such a reputation that goes beyond the dissimilarity of the goods and services at stake so that the link would be made by the general public. For this reason, an assessment must be made on a case-by-case basis.

In the present case, the General Court found that the Board of Appeal had made an incomplete examination of the goods and services which were applied for. It focused only in the specialized goods which were part of the Classes 9, 16 and 42 of the mark applied for, which for sure are intended to reach a more specialized public. But it did not take into account that in those classes there are goods and services that are aimed to a more general public, which overlaps with the relevant public of the earlier marks.

So, considering the reputation of the earlier marks, it cannot be denied that the public at which the mark applied for is aimed will know about the earlier mark, even though it is a very specialized public. Notwithstanding that, the General Court states that the Board of Appeal was correct in considering that, bearing in mind the speciality of the relevant public of the marks applied for and the specific nature of the goods and services that it pretends to cover, the relevant public would not make a connection between the marks.

In conclusion, the General Court Annuls the decision of the First Board of Appeal to the extent that the Board of Appeal dismissed the appeal brought by Puma SE in so far as the application for registration of the word sign PUMA-System as an EU trade mark covers the goods and services in Classes 7, 9, 16 and 42  corresponding, for each of those classes, to the following description: 

-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’;

Judgement of the General Court, case T-71/20 dated 10 March 2021