OPPOSITION No B 2 170 556

Puma Se, Puma Way 1, 91074 Herzogenaurach, Germany (opponent), represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º dcha., 28001 Madrid, Spain (professional representative)

a g a i n s t

Doosan Machine Tools Co. Ltd., 40 Jeongdong-ro 162 beon-gil Seongsan-gu Chang-won-si 51537 Gyeongsangnam-do, Republic of Korea (applicant), represented by Eisenführ Speiser Patentanwälte Rechtsanwälte Partgmbb, Johannes-Brahms-Platz 1, 20355 Hamburg, Germany (professional representative).

On 16/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 170 556 is upheld for all the contested goods.

2. European Union trade mark application No 11 376 209 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 11 376 209 . The opposition is based, on (1) international trade mark registration No 582 886 designating Bulgaria, Benelux, Czech Republic, Denmark, Germany, Estonia, Greece, Spain, France, Italy, Cyprus, Latvia, Lithuania, Hungary, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland and the United Kingdom, and (2) international trade mark registration No 437 626 designating Benelux, Czech Republic, Germany, Spain, France, Italy, Hungary, Austria, Portugal, Romania, Slovenia and Slovakia . The opponent invoked Articles 8(1)(b) and 8(5) EUTMR in respect of (1) the earlier international trade mark registration No 582 886 and Article 8(5) in respect of (2) the international trade mark registration No 437 626.

For the sake of completeness, contrary to the applicant’s observations, the Office accepts, as evidence of international registrations, extracts from WIPO’s Madrid Monitor database.

SUMMARY OF THE PROCEEDINGS BEFORE THE OFFICE

On 31/03/2015, the Opposition Division rendered a decision that resulted in the entire rejection of the opposition. On the one hand, the opponent submitted insufficient evidence to prove the reputation of the earlier trade marks, according to Article 8(5) EUTMR. On the other hand, one of the necessary conditions of Article 8(1)(b) EUTMR was not fulfilled: the contested goods in Class 7 and the opponent’s goods in Classes 18, 25 and 28 (the only goods for which the opponent proved use) under comparison were found dissimilar.

The decision of the Opposition Division was appealed before the Board of Appeal (04/12/2015, R 1052/2015‑4, PUMA (fig.) / PUMA (fig.) et al.). The findings of the Opposition Division in relation to the dissimilarity of the goods under Article 8(1)(b) were endorsed by the Board of Appeal (§ 22). As to the grounds of the opposition under Article 8(5) EUTMR, without assessing the evidence, the Board of Appeal assumed that the earlier marks enjoyed the highest reputation for clothing and sports article. Furthermore, the conflicting signs were found highly similar (§ 28). With regard to the link between the signs, the Board of Appeal pointed out that the contested goods in Class 7 (Lathes; CNC (computer numerical control) lathes; machining centers; turning center; electric discharge machine) were specialised products. They were addressed to a highly specialised public of technical professionals. On the contrary, the opponent’s reputed goods in Class 25 (clothing and sports article) were addressed to the average consumer who required these kinds of basic goods on a daily basis (§ 33-34). The contested goods are aimed at a different section of the public, that when confronted with the contested mark in relation to the contested goods will not call to mind the earlier marks. In light of all above, the Board of Appeal concluded that it was very unlikely that the relevant public would establish a link between the signs with the result that, the use of the contested sign would not take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier marks (§ 37). As a consequence, the appeal was dismissed.

An action for annulment was lodged before the General Court (26/09/2018, T 62/16, PUMA, ECLI:EU:T:2018:604). The General Court stated that the Board of Appeal correctly assessed the relevant sections of the public and the high degree of similarity between the conflicting signs (§ 50 and 56). However, the Board of Appeal did not properly take into account the degree of reputation relied on by the opponent (§ 69). Furthermore, the Board of Appeal erred in finding a low degree of the inherent distinctive character of the earlier marks (§ 78). Consequently, it committed an error in the assessment of whether there is a link between the signs (§ 85). In light of the errors committed by the Board of Appeal, the General Court annulled the contested decision and remitted the case to the Board of Appeal to re-examine the arguments of the opponent. To that end, it had to reach a definitive conclusion, first, with regard to the existence of the reputation of the earlier trade marks and how strong that reputation is, and, secondly, with regard to the degree of inherent distinctive character of the earlier marks (§ 105).

By its decision, the Board of Appeal (30/07/2019, R 192/2019-1, PUMA (fig.) / PUMA (fig.) et al) remitted the case to the Opposition Division for further prosecution. In particular, according to the indication of the Board of Appeal, the Opposition Division has to establish the existence of a reputation and the inherent distinctiveness of the earlier marks, and in the affirmative, the degree thereof. Furthermore, the Opposition Division has to assess if a link between the signs may be found.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s earlier international trade mark registration No 437 626 claiming reputation in Benelux, Czech Republic, Germany, Spain, France, Italy, Hungary, Austria, Portugal, Romania, Slovenia and Slovakia.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 27/11/2012. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the aforementioned territories prior to that date.

The evidence must show that the reputation was acquired for the goods for which the opponent has claimed reputation namely:

Class 18: Leather and imitations of leather, namely bags, trunks and suitcases, carrying bags, travel bags, especially for sports equipment and sportswear.

Class 25: Clothing, including boots, shoes, slippers and booties, especially clothing and sports, leisure and exercise shoes.

Class 28: Games, toys, apparatus for physical exercise, gymnastics equipment and sport, including sport balls.

In order to determine the level of reputation of a mark, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

According to the indication of the Board of appeal (R 192/2019-1, 30/07/2019, PUMA (fig.) / PUMA (fig.) et al), the Opposition Division has to consider all the evidence (namely annexes 1 to 7, annexes 1bis to 4bis, annexes 1 ter to 13 ter) submitted during the opposition and appeal proceedings. In doing so, the Opposition Division will also take into account the considerations expressed in its previous decisions, as identified by the opponent.

Therefore, the opponent submitted the following evidence:

Evidence submitted during the Opposition Division proceedings

 Annex 1: information about the history of ‘PUMA’ from the opponent’s website dated 08/03/2011 stating, inter alia, that the company was established in 1948 and showing images of shoes, sport wears and famous athletes having worn PUMA gear since 1948.

 Annex 2: a printout from the opponent's website dated 08/03/2011, giving general information about the company’s profile and mission (‘one of the world’s leading sportswear companies’, ‘products distributed in more than 120 countries’, ‘more than 9,000 employees worldwide’, ‘headquarters in home country (Germany, Boston, London and Hong Kong’).

 Annex 3: several printouts from three different websites dated 08/03/2011 (www.delatime.com, www.zappos.com, www.sneakerhead.com), showing that goods under a trade mark ‘PUMA’, namely different kind of footwear, were made available for sale online.

 Annex 4: business information about sales made by the opponent worldwide. News published on the opponent´s website dated 15/02/2011 about the financial results of PUMA company for the year 2010. Several affidavits signed by the opponent’s financial directors or managing director confirming the very high sales of footwear between 2002 and 2010 in different EU countries, such as United Kingdom, Germany, Italy, Sweden, Finland, Norway, Czech Republic, Spain, Benelux and Poland. Attached to some of the affidavit there are catalogues showing footwear and apparel bearing the earlier mark. A table giving information about the marketing expenditure of PUMA company in the years 2006 and 2007 for Benelux, Finland, Germany, France, Italy, Norway, Sweden and the United Kingdom.

 Annex 5: several affidavits signed by the opponent’s head of IP, confirming the sale of footwear for the years between 2008 and 2010 in several European countries, such as Benelux, Denmark, Finland, Germany, Italy, Sweden, United Kingdom and Ireland.

 Annex 6: an affidavit signed by the opponent’s general director, giving information about the sales figures for apparel, footwear and headgear for the years 2008-2013 in several relevant territories of the European Union.

 Annex 7: eight affidavits signed by the opponent’s managing director showing the sales of footwear between 2008 and 2013 under the earlier marks in Sweden, Italy, Germany, Finland, Denmark, Benelux, Spain and the United Kingdom.

Belated evidence submitted during the Opposition Division proceedings:

 Annex 1bis: opponent’s catalogues in English dated between 2009 and 2013 showing different accessories such as bags, suitcases, wallets, belts, golf bags, backpacks, handbags, shoppers, scarfs, etc., bearing one or both registered earlier marks. No prices and no countries mentioned.

 Annex 2bis: several opponent’s catalogues dated between 2009 and 2013 and invoices relating to territories of Benelux, France, Czech Republic, Italy, Spain, Portugal and the United Kingdom.

 Annex 3bis: invoices and copies of catalogues showing the goods, such as bags, sports clothing and footwear for the following territories: Benelux, France, Czech Republic, Italy, Spain, Portugal and the United Kingdom for the years 2009-2013.

 Annex 4bis: a catalogue dated 2001 in English showing Formula 1 clothing, footwear and headgear products bearing the earlier trade mark.

Evidence submitted during the appeal proceedings

 Annex 1ter: Annex 1.1ter. a document with information on the history of the opponent's undertaking and annexed press cuttings; Annex 1.2ter. printouts from the opponent’s website with information on the history of the company; Annex 1.3ter. pictures of and information about the famous tennis player Serena Williams wearing the opponent's products; Annex 1.4ter. press cuttings showing the use of the opponent's goods by major football teams; Annex 1.5ter. a catalogue of ‘Textiles autumn/winter 97/98’ showing an array of sports clothes bearing the opponent's trade mark; Annex 1.6ter. printouts from third party websites through which the opponent's goods are sold; Annex 1.7ter. a list of the opponent's trade marks in the world; Annex 1.8ter. copies of the publications ‘Sporting Goods Intelligence’ from the years 2002-2007 with business information on the sports sector mentioning the opponent's mark or company name ‘PUMA’; Annex 1.9ter. documents showing the sponsorship under the opponent’ trade mark in the field of motor sports; Annex 1.10ter. copies of articles and advertisements from a number of magazines in several countries showing the opponent's trade mark: Annex 1.11ter. the report from a public survey carried out in France in 2008. The report rates the spontaneous notoriety of the Jumping Cat mark at 97% (96% among men, and 98% among women). Annex 1.12ter. Information on sponsorship by PUMA in sailing.

 Annex 2ter: corporate information from the opponent’s website including information about the history of the company and a list of talented sportsmen and sports teams all over the world who have been sponsored by PUMA since 1948.

 Annex 3ter: an article from the Dutch newspaper ‘Frankischer Tag’, ‘60 Jahre 1948-2008’, dated 24/10/2008, showing the story of the opponent from 1948 to 2008.

 Annex 4ter: various invoices issued by the opponent between 2002 and 2007 in United Kingdom, Sweden, Iceland, Norway and Poland for footwear, clothing and accessories.

 Annex 5ter: schedules showing the total amount of sales of PUMA Nordic, UK, Germany, CZK, Italy, Estudio 2000 SA (Spain), and Benelux between 2002 and 2007 for footwear. These schedules are signed by the financial or general manager of the respective PUMA companies.

 Annex 6ter: affidavit attesting to sales of footwear, apparel and headgear in France, Germany, Austria, Switzerland, Italy, United Kingdom, Benelux, Denmark, Finland, Sweden, Norway, Spain, Portugal, Lithuania, Czech Republic, Slovakia, Poland, Hungary, Estonia, Latvia, Cyprus and Greece from 2008 to 2013.

 Annex 7ter: several documents with economic and sales data of the company relating to the financial result for 2010 from the opponent’s website. An affidavit including sales figures for footwear sold in the European Economic Area from 2008 to 2010. An affidavit including sales figures for footwear sold in Spain during the years 2008 to 2010. Several affidavits attesting to sales data in Germany, Italy, the UK and the Nordic countries that belong to the European Union dating from 2002 and 2007. This annex also includes a summary of specific products, units of each product sold and net sales of products from 2002 to 2007. Details of marketing expenses from 2000 to 2010.

 Annex 8ter: opponent’s footwear catalogues from 2006 to 2011 in English.

 Annex 9ter: several tables made by the opponent showing the promotional expenses from 2006 until 2014. This annex contains details of the different PUMA campaigns in the European Union and their corresponding costs.

 Annex 10ter: photos and clippings about celebrities in the sports world who wear footwear and clothing bearing the earlier marks, not only in Europe, but all over the world, including star footballers, such as Cesc Fabregas, Gianluigi Buffon or Radamel Falcao; national football teams, such as Italy, Austria, South Africa or Uruguay, and Formula 1 drivers, such as Fernando Alonso or Michael Schumacher.

 Annex 11ter: news from the Internet, several rankings and lists drawn up by organizations that are independent from PUMA, showing that PUMA is the third most famous mark in relation to sport apparel.

 Annex 11.2ter. an article that appeared on the website Statista – The Statistics Portal under the title ‘PUMA products purchased in the UK, by clothing type’. This study confirms that 1.38 Million Britains used PUMA sport shoes in 2013.

 Annex 11.3ter. an article entitled ‘Verbraucher schätzen Qualität und Marke’ (‘Consumers appreciate quality and brand’), summarising a study conducted by Spiegel-Outfit 8.0 and published on 17/10/2013 on the website www.textilwirtschaft.de. Although the article is in German, it includes a table referring to brand awareness, specifically ‘what percentage of the interviewees knows the brand’ in the relevant clothing industry. According to the table, the opponent’s brand was ranked among the top brands in 2011 and 2013, with its main competitor being Adidas, as shown in the following: .

 Annex 11.4ter. a study entitled ‘Nike, Adidas, Puma among Interbrand’s Best Global brands in 09’, in which the opponent’s brand ‘PUMA’ is ranked 97th, with a brand value of USD 3.2 billion. The criteria of the study are the following: 1) substantial, publicly­available financial data; 2) brand must have at least one­third of revenue outside of its country­of­origin; 3) brand must be a market­facing brand; 4) economic value added (EVA) must be positive; and 5) brand must not have a purely B2B single audience with no wider public profile and awareness.

 Annex 11.5ter. a document called ‘PUMA Case Study’, drawn up by the independent company D&AD in 2015. This study shows that the trade mark PUMA has achieved a relevant well-known character during the last years. In particular, it states that ‘in ten years PUMA not only increased its brand value steadily in line with the major brands but also it hits 3 bn sales for the first time and it sponsored the famous athlete Usain Bolt at the Olympics games in 2012’.

 Annex 11.6ter. extracts from the book Sports in the Co-opetition of Metropolitan Regions by Gerhard Trosien, published in 2012, including the following (p. 35): ‘the reason for this is that the two biggest sporting goods corporations in Germany and in Europe are located there (Adidas, no.2 and Puma, no 3 world-wide also)’.

 Annex 11.7ter. an extract from the book Sport Brands, by P. Bouchet, D. Hillairet and G. Bodet, published in 2013, including the following: ‘Puma chose the opposite strategy and targeted upper segments. The brand commercialised a trendy urban collection inspired by its models designed for sport competition. Available in many colours, these models were very quickly successful. … Puma passed its rejuvenating challenge and has become one of the younger generations’ favourite brand… to promote its trendy and fun image relies on sport sponsorship and creative marketing campaigns involving champions such as Serena Williams’.

 Annex 11.8ter. an article entitled ‘Most Exciting Brands 2015’, published on 13/05/2015 at www.retail.economictimes.indiatimes.com, including the following: ‘The relatively humble and unprepossessing Woodland has trumped formidable competitors like Nike, Adidas and Puma to dominate the Sport and Footwear category in the Most Exciting Brands 2015 survey’.

 Annex 11.9ter. On the website of Statistics Portal a document showing a ranking of the sporting goods brands awareness amongst US male in 2014, in which PUMA is ranked as number four.

 Annex 12ter: copies of publications published by Sporting Goods Intelligence (www.sgieurope.com), an independent news source in the sporting goods industry that delivers expert analysis. These publications relate to the period 2004-2015 and give sales figures from, inter alia, the athletics sector, positioning the opponent’s mark ‘PUMA’ among its competitors. ‘PUMA’ ranks third among other international brands in the athletic footwear market, having very substantial sales and market shares.

 Annex 13ter: list of PUMA shops in the European Union, whose total comes to more than 130 shops.

Analysis of the evidence and conclusion

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is well-known in the relevant market, where it enjoys a consolidated position among the leading brands.

The earlier mark has been present and intensively used on the EU market for more than 70 years. According to evidence, the opponent’s company was founded on 1948. Since then it has grown to become one of the world’s leading sportswear companies that designs and develops footwear, apparel and accessories’ with products distributed in more than 120 countries and with more than 9,000 employees worldwide (Annex 2 and 2 ter). Furthermore, as indicated in the affidavit and corroborated by several invoices and annual report of 2010 (Annexes from 4 to 7, 3 bis and from 4ter to 7ter), the amount of sales for the clothing and footwear in the European Union has been very high over a very long period of time.

The marketing expenditure, the various references in the press to the success of the earlier mark, the opponent’s sponsorship activities and the several rankings drawn up by independent sources all unequivocally show that the mark enjoys a very high degree of recognition among the relevant public (Annexes from 9ter to 11.9ter). As especially brought up by the opponent, the earlier trade mark has been intensively exploited through sponsorships in various sports disciplines of worldwide resonance, in particular football, athletics, motorsport and sailing (Annexes 1ter and 10ter). The evidence also shows that the opponent sponsored celebrities and athletes since 1948 who are famous worldwide, such as Serena William and Gianluigi Buffon. These advertising activities have allowed the earlier trade mark to become known beyond the circle of actual purchasers of the relevant goods.

Furthermore, the opponent provided details about its market share on the relevant market: some of the evidence directly refers to the brand’s position among its major competitors both in the EU and from a worldwide perspective (Annexes 1.11ter and 11.3ter). This information was further corroborated with additional statistics and reports on the public recognition of the brand published by third parties, especially in France and Germany (Annexes 1.11 ter, 11.2ter, 11.3 ter and 11.5ter). This evidence is also a strong indicator of the public perception of the opponent’s brand.

Taking into account all the evidence, it is clear that the opponent has undertaken significant steps to build a strong brand image and enhance its trade mark awareness for all the public in all sectors.

The worldwide notoriety of the opponent’s mark amongst consumers has been confirmed also by the Board of Appeal when remitting the present case to the Opposition Division (§ 60). In particular, the Board of Appeal pointed out that taking into consideration all the evidence the PUMA brand is one of the most valuable and best-known brand in the world for clothing and footwear. Likewise, the Opposition Division has also recognised a high degree of recognition of the PUMA trade mark among the relevant public in various decisions, as shown by the opponent (decisions B 1 291 618, 30 May 2011, B 1 287 178 30 August 2010 and B 1 459 017, 20 August 2010).

In light of all the above, contrary to the applicant’s observations, the Opposition Division concludes that the earlier trade mark enjoys a very high degree of reputation in Benelux, Czech Republic, Germany, Spain, France, Italy, Hungary, Austria, Portugal, Romania, Slovenia and Slovakia for the following goods:

Class 25: Clothing, including boots, shoes, slippers and booties, especially clothing and sports, leisure and exercise shoes.

However, the opponent did not prove the reputation for the remaining goods in Classes 18 and 28. There is no evidence which refers to them.

b) The signs

Earlier trade mark	Contested sign

The relevant territories are Benelux, Czech Republic, Germany, Spain, France, Italy, Hungary, Austria, Portugal, Romania, Slovenia and Slovakia.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Both signs are figurative signs consisting a sole verbal element ‘PUMA’.

The common verbal element ‘PUMA’ of the signs will be most likely associated throughout the relevant territories with ‘a wild brownish-grey animal that is a member of the cat family and lives in mountain regions of North and South America’. Given that this word is not directly related to the goods in question, it is considered that inherently it has an average degree of distinctiveness. Indeed, as stated by the General Court, it cannot be established that the goods designated by the earlier mark may possess the qualities of strength and power or the term ‘PUMA’ alluded to the characteristics of those goods (26/09/2018, T 62/16, PUMA, ECLI:EU:T:2018:604, § 77). Furthermore, it cannot be held that the notion of a feline would be less distinctive since this requires a stretching of the imagination.

Visually and aurally, both signs coincide fully in their sole verbal element ‘puma’ and their sound given by their pronunciation. From a visual perspective, they slightly differ in their stylisation. The size of the letters is slightly bigger in the earlier mark than in the contested sign. However, this difference has a minimal impact (if any) on the visual comparison of the signs.

Therefore, the signs are considered visually highly similar, if not even almost identical, and aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with an identical meaning produced by the coinciding verbal element ‘PUMA’, they are considered conceptually identical.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

c) The ‘link’ between the signs

As seen above, the earlier mark enjoys a high degree of reputation in the European Union and the signs are almost identical. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

As stated by the Board of Appeal (R 192/2019-1, 30/07/2019, PUMA (fig.) / PUMA (fig.) et al) and confirmed by the General Court, the contested goods and the reputed goods are dissimilar and they target a different type of public. The contested ‘lathes and CNC (computer numerical control) lathes’ are machines for shaping wood, metal, or other material by means of a rotating drive which turns the piece being worked on against changeable cutting tools. The contested ‘machining centers’ describe almost any CNC milling and drilling machine that includes an automatic tool changer and a table that clamps the work piece in place. The contested ‘turning center’ is a lather with a computer numerical control. The contested ‘electrical discharge machine’ is used in a manufacturing process whereby a desired shape is obtained using electrical discharges. The above contested goods in Class 7 are addressed to a highly specialised public consisting of professionals in the industry. The reputed goods target the public at large comprising the average consumers who require these kinds of basic goods on a daily basis in order to get dressed and prepared for sports and leisure.

In light of all the above, it should be underlined that the Court of Justice stated that Article 8(5) EUTMR expressly covers cases where the goods or services were not similar (see, to that effect, judgment of 7 May 2009, C-398/07 P, Proprietary, not published, EU:C:2009:288, § 34). Therefore, the dissimilarity between the goods designated respectively by the marks at issue is not a sufficient factor for excluding the existence of a link between those marks. Indeed, the existence of such a link must be assessed globally by taking into account all of the relevant factors of the case (judgment of 27 November 2008, C-252/07, Intel Corporation, EU:C:2008:655, § 41 and 42; and judgment of 6 July 2012, T-60/10, ROYAL SHAKESPEARE, not published, EU:T:2012:348, § 21).

The applicant stated that it is highly unlikely that the average consumer of sport shoes and clothing will make a link with the contested mark because the contested goods are directed to the professionals which are interested in those special machines.

However, according to the Court of Justice of the European Union, certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 51‑52).

In the present case, the earlier mark enjoys a very high degree of reputation in Benelux, Czech Republic, Germany, Spain, France, Italy, Hungary, Austria, Portugal, Romania, Slovenia and Slovakia and it has an average degree of inherent distinctiveness.

Additionally, as pointed out in the assessment of the evidence, the opponent’s trade mark is not only featured on goods for mass consumption that target the public in general but they reach consumers beyond the relevant target group of the brand (i.e. purchasers of footwear and clothing) by investing significant amount of money and resources in advertising activities and worldwide sponsorships. As a consequence, the earlier marks’ reputation has been beyond the actual market sector to which the opponent’s goods belong and, thus, has reached different parts of the general public, including some of the consumers of the contested goods.

Therefore, despite the lack of overlap between the relevant sections of the public and the dissimilarity of the goods at issue, an association between the contested sign and the earlier trade mark remains possible, taking into account the near identity between the signs and the very high reputation acquired by the earlier mark as well as its inherent distinctiveness.

Indeed, as shown by the opponent, there are brands on the market that do actually operate in completely different sectors, such as in the footwear/apparel sector as well as the industrial sector. For example, the opponent submitted evidence that the trade mark CATERPILLAR, which is well-known for their construction machinery, is also used on products, such as shoes and sweat-shirts. Other well-known marks may be affixed on goods which are totally different from those which have made them famous, such as the famous Mercedes-Benz trade mark for washing machines. Therefore, when confronted with two practically identical marks, and more importantly when PUMA is so reputed it is not so far-fetched that consumers would link them.

Weighing up all the relevant factors of the present case, the Opposition Division concludes that, when encountering the contested mark, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

d) Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

From the content of the opponent’s observations, the Opposition Division identify that the opponent claimed two different forms of injury, as it further clarified in the observations submitted before the Board of Appeal (R 192/2019-1, 30/07/2019, PUMA (fig.) / PUMA (fig.) et al) on 11/06/2019. The opponent claims that the use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character of the earlier trade mark.

In light of that, the Opposition Division will first analyse if the contested sign will take unfair advantage of the reputation of the earlier mark.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent based its claim on the following arguments:

 The use of a trade mark such as ‘PUMA’ would allow the applicant to take advantage of its high distinctive character. The features of PUMA products, their quality and the remaining values of ‘PUMA’, and these features of energy and power would be transferred to the products sold under the mark PUMA leading to a situation of parasitism which must be avoided.

 The positioning of the contested trade mark ‘PUMA’ in the marketplace would be much easier, simply because of the relationship that consumers would establish with the earlier and reputed ‘PUMA, for which the applicant would take advantage of the investments in promotion and advertisements undertaken by the opponent in order to make its trade mark known among consumers.

 When a mark ends up achieving a very high degree of recognition on the market, it conveys to consumers a much broader message than that of the business origin of a given product. The adoption of that mark by an unrelated party for a different product may take unfair advantage of that recognition because the positive message contained in the mark is effortlessly associated by that party to its own product.

According to the Court of Justice of the European Union, as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36).

To determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake an overall assessment, which takes into account all the factors relevant to the circumstances of the case (10/05/2007, T‑47/06, Nasdaq, EU:T:2007:131, § 53; 12/03/2009, C‑320/07 P, Nasdaq, EU:C:2009:146; 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 30, 38; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 57, 58, 66; 24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 53).

The opponent argued that the quality, the values of ‘PUMA’ and these features of energy and power would be transferred to the goods sold under the contested sign leading to a situation of parasitism which must be avoided.

Based on the evidence presented, it is clear that the reputed goods have become some of the most recognized in the relevant territories by the majority of the public and PUMA enjoys the status of an iconic mark. As the opponent claims, its trade mark represents a brand relying on longstanding traditions in manufacturing quality products. It also conveys a particular image, with values such as strength, speed and active sporting spirit, and transmits content-related messages to its consumers. Furthermore, the opponent’s company has established itself as a great supporter and sponsor of celebrities, sportspeople and clubs involved in various sporting fields, which has only enhanced the power of the brand’s goodwill. As may be inferred, the brand has created a positive image in the areas of sports, active life and leisure time.

Given the vary high degree of reputation and the almost identity between the signs, it is foreseeable that the applicant may benefit from aspects of the special image of the opponent’s trade mark’s reputation, as shown above. Therefore, by association it is reasonable to consider that there will be an image transfer that it will advantage the applicant unfairly. At least the applicant may achieve more visibility by commercialising goods with a brand which will be seen the same as the opponent’s mark. Indeed, as seen above in the link, there are other brands on the market which operate in diverging fields such as footwear and apparel as well as more industrial sectors and this also supports the opponent’s assertions in this regard that the contested sign will be associated with the reputed earlier mark.

In addition, as follows from case-law, taking unfair advantage does not necessarily require a deliberate intention to exploit the goodwill attached to someone else’s trade mark. The concept of taking unfair advantage ‘concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation’ (19/06/2008, T‑93/06, Mineral Spa, EU:T:2008:215, § 40; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40; 30/01/2008, T‑128/06, Camelo, EU:T:2008:22, § 46).

The General Court also stated that the stronger the earlier mark’s distinctive character and reputation are, the easier it will be to accept that harm has been caused to the earlier mark for the purposes of Article 8(5) of Regulation No 207/2009 (29 March 2012, T‑369/10, BEATLE, not published, EU:T:2012:177, § 65 and the case-law cited). In addition, it will have to bear in mind that, in the case of an opposition based on a mark with an exceptionally high reputation, it is possible that the probability of a non-hypothetical future risk of detriment or of unfair advantage being taken by the mark applied for is so obvious that the opposing party does not need to put forward or adduce evidence of any other fact to that end (22 March 2007, T‑215/03, VIPS, EU:T:2007:93, § 48, and of 27 October 2016, T‑625/15, SPA VILLAGE, not published, EU:T:2016:631, § 63)

On the basis of all the above and bearing in mind the high reputation of the mark and almost identity of the signs, the Opposition Division concludes that, from the perspective of the relevant public, the contested mark is likely to take unfair advantage of the repute of the earlier mark.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

e) Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.

Given that the opposition is entirely successful under Article 8(5) EUTMR, it is not necessary to examine the remaining grounds and earlier rights on which the opposition was based.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Vanessa PAGE

Birgit FILTENBORG

Cristina SENERIO LLOVET

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.