OPPOSITION No B 2 981 648

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

CAMäleon Produktionsautomatisierung GmbH, Breitwasenring 4, 72135 Dettenhausen, Germany (applicant), represented by Luppi Intellectual Property SRL, Viale Corassori, 54, 41124 Modena, Italy (professional representative).

On 17/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 981 648 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 786 907 for the word mark ‘PUMA-System’. The opposition is based on the following earlier rights, in relation to which the opponent invoked Article 8(5) EUTMR:

• European Union trade mark registration No 12 579 728 ;

• European Union trade mark registration No 12 579 694 ;

• International trade mark registration No 437 626 designating Austria, Benelux, Croatia, Czech Republic, France, Germany, Hungary, Italy, Portugal, Romania, Slovakia, Slovenia and Spain;

• International trade mark registration No 582 886 designating Austria, Benelux, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Italy, Latvia, Lithuania, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, United Kingdom and the EU.

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.

1. Reputation of the earlier trade mark EUTM No 12 579 728

According to the opponent, the earlier trade marks have a reputation in the European Union and/or in the respective Member States in which the international registrations have effect. It has to be noted that the earlier rights of the opponent cover identical or essentially similar goods in Class 18 (leather and imitation of leather, goods made thereof, bags and accessories), Class 25 (clothing, footwear and headgear) and Class 28 (toys, games, playthings, sporting equipment and articles).

For reasons of procedural economy, the Opposition Division will initially proceed with the earlier EUTM No 12 579 728  , in particular due to its closer appearance to the challenged application.

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 01/06/2017. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 18: Leather and imitations of leather, and goods made of these materials, namely briefcases, bags, bags for clothing, holdalls, weekend bags, multipurpose bags, all-purpose athletic bags, all-purpose sports bags, work bags, attaché cases, shopping bags, two-wheeled shopping bags, souvenir bags, bags (envelopes, pouches), for packaging, tote bags, handbags, small clutch purses, sling bags, gladstone bags, ladies' handbags, gentlemen's handbags, bags for men, hip bags, evening handbags, evening bags, beach bags, bags for sports, courier bags, changing bags, tool bags, bags for campers, belt bags and hip bags, pouches, gym bags, shoe bags, satchels, school book bags, school bags, shoulder belts and straps, shoulder bags, haversacks, camping bags, boston bags, casual bags, sling bags for carrying infants, diplomatic bags, document cases, folders, document wallets, boxes, luggage, travel luggage, trunks for travel purposes, baggage, flight bags, trunks and travelling bags, travel bags, flight bags, wheeled shopping bags, travelling handbags, vanity cases, not fitted, garment carriers, suit carriers, travel garment covers, duffel bags, rucksacks, bags for climbers, bags for campers, nappy bags; bags and pouches, included in Class 18, and small goods of leather, namely luggage tags, luggage label holders, bags for men, baggage, coin purses, coin purses, pocket wallets, wallets, coin purses, card holders, card holders, briefcases, credit-card holders, credit-card holders, credit-card holders, business card cases, driving licence cases, key bags, key bags, fanny packs, clutch bags, small pouches, toiletry bags, cosmetic purses, cosmetic purses, make-up bags, cosmetic purses, cosmetic purses, cosmetic purses, tie cases, laces; wallets, pocket wallets, key cases, handbags, briefcases, shopping bags, satchels, carrier bags, travelling bags, sports bags, included in Class 18, duffel bags, rucksacks, school bags, belt bags, toiletry bags, trunks and travelling bags; umbrellas, parasols and walking stick.

Class 25: Apparel, footwear, headgear.

Class 28: Games and playthings, gymnastic and sporting equipment, gymnastic and sporting articles (included in class 28); skiing and tennis equipment; skis, ski bindings, ski poles, edges for skis, climbing skins for skis; balls, including balls for sports and balls for games, golf balls, tennis balls; dumb-bells, shot puts, discus, javelins, clubs for gymnastics, sport hoops; shin pads, knee, elbow and ankle guards for sports purposes; sports gloves, included in Class 28; tennis rackets, cricket bats, golf clubs, hockey sticks; table tennis rackets, badminton rackets and squash rackets and parts therefor, in particular grips, strings, grip and lead tape; bags for sports equipment, specially designed for the objects to be carried therein; specially adapted bags and sleeves for tennis rackets, table tennis rackets, badminton rackets, squash rackets, cricket bats, golf clubs and hockey sticks; roller skates and ice skates, inline skates, table tennis tables and nets; nets for sports, goal and ball nets; start and finish banners, tapes and awnings for sports events, sight screens for tennis courts, umpires' stools for tennis events.

The Opposition Division finds it necessary to address also the goods and services against which the opposition is directed, namely:

Class 7: Machine tools for machining and cutting profiles; cross-cut saws and circular saws for wood and light alloys; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); packaging machines; automatic warehouses; robots; machines for treatment of PVC; power screwdriver; painting machines; machines for the production of door and window frames; machines for assembling shuttering components; machines for processing aluminium, plastic and steel profiles, in particular for the window, door and facade industry; table and mitre saws; double mitre saws; automatic saws; wedge-cutting and v-cutting saws; milling machines; copy milling cutters; end milling cutters and automatic notching machines; water slot milling cutters; corner crimping machines; rod machining centres; welding machines; roughcasting machines; welding and cleaning lines; bending machines, including bending furnaces and bending installations; screw systems for reinforcing profiles; drilling machines, drilling rigs; punching; stops for machines for processing aluminium, plastic and steel profiles; assembly stands and assembly tables; rotary tables; saw fences for use on table saws; metalworking machine tools.

Class 9: Computer hardware; computer software; computer hardware and software for the management of door and window frame production cycles and installations; magnetic and optical data carriers; computer programmes [programs], recorded; computers; computer peripheral devices; computer hardware and software for automation purposes; computer hardware and software for the management of machine tools; warehouse management systems; management systems for door and window frame production installations; communications systems for data relating to the production, assembly, storage, delivery of door and window frames; automatic handling systems for door and window frame production installations; cell phones; portable computers; printers for computers; programs for personal computers, mobile telephones and handheld computers; heatdetectors; level indicators; headphones; headsets; cables for personal computers, mobile telephones and palmtop computers; bar code readers; measuring instruments; programs for computers; computer-aided design (CAD) software; software for estimating, selling, designing and producing shuttering and curtain walls; software for programming and managing machine tools; software for checking (supervision) of industrial production and automation; computer programs for estimating, selling, designing and producing shuttering and curtain walls; computer programs for programming and managing machine tools; computer programs for checking (supervision) of industrial production and automation; software for the management of door and window frame production cycles and installations; computer programs for managing shuttering production cycles and installations; computers; peripherals adapted for use with computers; magnetic and optical data carriers; data-processing equipment and computers.

Class 16: Catalogues relating to computer software; computer software operating manuals; computer software operating manuals; instruction manuals; instruction manuals for personal computers, mobile telephones and palmtop computers; instruction manuals for the certification of door and window frames; printed forms; printed matter for promoting and selling software for designing, producing and/or selling doors, windows and partitions; printed matter for promoting and selling software for managing machine tools and checking (supervision) of industrial production and automation; books; user manuals (handbooks) for computer programs for designing, producing and/or selling doors, windows and partitions; user manuals (handbooks) for computer programs for managing machine tools and checking (supervision) of industrial production and automation.

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; creation, maintenance and adaptation of software; installation, maintenance, updating and upgrading of computer software; computer systems integration services; rental of computer hardware and computer software; design, development and implementation of software; computer software research; computer software technical support services; technical project studies in the field of computer hardware and software; development of computer programs recorded on data media (software) designed for use in construction and automated manufacturing (cad/cam); development of computer software for computer aided design/computer aided manufacturing [CAD/CAM]; upgrading of computer software; development and testing of computing methods, algorithms and software; computer programming; testing, analysis and evaluation of the goods and services of others for certification purposes; computer programming in relation to applications for designing, producing and/or selling doors, windows and partitions; computer programming in relation to applications for managing machine tools and checking (supervision) of industrial production and automation; creating programmes for data processing.

In order to determine the mark’s level of reputation, 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.

On 27/10/2017, the opponent submitted the following evidence:

Annexes 1 and 2: extracts (including press kits), mostly originating from the opponent’s official website www.puma.com, containing general information about the ‘PUMA’ brand, the company’s corporate identity and strategy, and various historical aspects of the company’s development, in particular a presentation structured as a timeline regarding sportspeople and sports teams that have been sponsored by the company since 1948 (featuring the marks ‘Puma’, and ). It can be inferred from the text that the company is a major supporter and sponsor of different sports disciplines, including team sports (in particular, the football World Cup and basketball), athletics, sailing, motorsport and golf.

Annex 3: a special supplementary brochure entitled ‘60 Jahre 1948-2008’, which is devoted to the 60th anniversary of Puma (1948-2008), published in the German newspaper Fränkischer Tag (in German) on 20/10/2008. By way of example, the article states that the opponent’s company was established in 1948, when it first started producing footwear and gained particular success with its football trainers.

Annex 4: a presentation entitled ‘Puma Motorsport’, containing different facts and timelines (1998-2016) about the brand’s sponsorship of motorsport, in particular Formula 1, in which the earlier mark ‘PUMA’ appears on cars and team equipment and in advertisements.

Annex 5: a copy of the annual report of Puma SE for 2013 (publicly accessible), containing information about the brand’s performance on the market in the relevant year, together with the total market share and the economic achievements of the ‘Puma’ brand worldwide. The brand’s mission and positioning planned for the upcoming year are highlighted, in particular for it to be ‘The fastest sports brand in the world’, which aligns with its motto ‘Forever faster’. In addition, the opponent points out that the brand sales are broken down by region for the period 2009-2013 (p. 88), in which the Europe, Middle East and Africa (EMEA) region is introduced; in particular, sales in 2013 for the EMEA region constituted around 40% of the world sales of the brand. A reference is also made to the EMEA affiliates of the company (pp. 129-139), which are found in, inter alia, the territories of most of the EU Member States (i.e. the relevant territories). The report also provides information on the main commercial segments covered by the brand ‘PUMA’, namely apparel, footwear and accessories.

Annexes 6 and 7: affidavits, signed by the General Director and Chief Financial Officer of Puma, attesting to the sales of footwear, apparel and headgear in France, Germany, Austria, Italy, the United Kingdom, Benelux, Denmark, Finland, Sweden, Spain, Portugal, Lithuania, the Czech Republic, Slovakia, Poland, Hungary, Estonia, Latvia, Cyprus and Greece from 2008 to 2013, as summarised in the following table:

,

as well as to the sales of ‘footwear’ products for the period 2008-2015, regarding the United Kingdom, Sweden, Italy, Germany, Finland, Denmark, Benelux and Spain.

Annex 8: self-drawn information about footwear sales figures in various EU Member States concerning 2014 and 2015, accompanied by affidavits, signed by the Trade Mark Manager of the opponent’s company, and regarding the sales of ‘glasses’ in various Member States.

Annex 9: 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 10: a report on a public survey carried out in 2008 in France. As indicated in this report, the spontaneous recognition of the mark amounts to 97%. According to the opponent, this survey was conducted from 13/05/2008 to 20/05/2008 by Harris Interactive France: http://www.harrisinteractive.fr (part of the Harris Interactive Group).

Annex 11: a set of news and statistics from the internet, as well as rankings and lists provided by independent parties, demonstrating that ‘PUMA’ is the third most famous brand (worldwide) in relation to sports apparel, footwear and accessories, in particular:

• Annex 11.1: 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 at 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 11.2: 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.

• Annex 11.3: a study, ‘Puma Case Study’, published at www.dandad.org, in which the brand is compared with its main competitors in the sportswear industry, Adidas and Nike, for 2009-2011. The study provides information about the brand’s achievements and the introduction of new business and marketing strategies in the past, which together led to the revival and recent popularisation of the brand. The opponent highlights a particular part of the survey (p. 19): ‘by some measures, the brand has achieved a great deal. According to research by TNS published in 2009, PUMA now has a six percent market share of the UK sportswear market, behind Nike, Adidas, Reebok and Umbro’.

• Annex 11.4: 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 11.5: 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… .’

• Annex 11.6: 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 11.7: a table of the most purchased ‘Puma’ products in the UK, in which the opponent’s sports trainers are followed by the sports clothing and sports accessories that are also offered by the opponent in its product range.

• Annex 11.8: a table containing a comparison of the revenues of the companies Nike, Adidas and Puma for the period 2010-2013 (source: Statista, www.statista.com, 2015).

Annex 12: a set of materials illustrating marketing expenses for the relevant period, 2006-2015, containing images and videos of final advertising products from the different ‘PUMA’ campaigns managed in the European Union, as well as tables of the costs of these campaigns. The campaigns used different communication channels, including printed publications (newspapers and magazines), television and the internet (YouTube and other social networks). The opponent also uses popular sportspeople in its advertising campaigns and as ambassadors of its brand values (e.g. Usain Bolt, the Olympic champion sprinter and world record breaker).

Annex 13: a set of press clippings, divided into separate folders for the years within the period from 2006 to 2012, illustrating the earlier trade mark ‘PUMA’/ featured on sportswear goods, such as shoes, clothes and sports accessories. A table also orders the relevant clippings by date, with information about the printed media in which they appeared and its circulation, in particular magazines and newspapers published throughout the European Union, for instance FHM, Men’s Health, Joy, Stern, Neon, OK!, Kicker, bravo Sport, Bild and Der Spiegel (Germany, also contained in Germany: Hot Topics), Glamour, Amica and Gioia (Italy), GQ (Portugal), Ragazza (Portugal), FHM and Look (Romania), Financial Times and Elle (United Kingdom), Max and Marie Claire (France), Elle (Belgium) and Tiempo and Cosmopolitan (Spain). Some of the articles also refer to ‘PUMA’ events and new store openings.

Annex 14: a set of press clippings, also divided into separate folders for the years within the period 2006-2011, mostly regarding celebrities in the world of sport (in Europe and internationally) that have often worn clothing branded with the opponent’s mark , in particular football players (e.g. Cesc Fàbregas, Gianluigi Buffon, Radamel Falcao, Mario Gómez and Sergio Agüero) and Formula 1 drivers, such as Fernando Alonso, Michael Schumacher, Sebastian Vettel and David Coulthard. The clippings also contain other references to ‘PUMA’ marketing campaigns in 2006 and 2007 (referred to in tables of marketing expenditure generated for these periods) and to a ‘PUMA’ team in the Volvo Ocean Race 2008/2009 (sailing). A table also gives information on other sponsorships of the opponent in the fields of athletics, rugby, motorsport, golf, handball and cricket.

In its observations the opponent further refers to previous cases of the Office or the General Court of the EU, in which the allegedly reputed puma-device has been touched upon. In doing so, the opponent believes to provide the Opposition Division with arguments in favour of concluding on the reputation of its trade mark , which portrays an accompanying element of the global brand identity. The Opposition Division notes that the findings below, indeed, apply equally in relation to the figurative mark of the opponent containing this puma-device. This has been in particular tackled in some pieces of evidence, for instance Annex 10, where the degree of recognition of the puma-device has been commented (at least for the French market).

Analysis of the evidence and conclusion

The opponent’s brand ‘PUMA’ has been present and intensively used on the EU market for more than 70 years; as result, the brand has built up a strong corporate and brand identity and is, nowadays, associated by consumers among the EU with particular values, as attested by Annexes 1 and 2. It is only fair to give the appropriate weight to the opponent’s significant investments throughout the years, as demonstrated by the evidence in Annexes 3, 12, 13 and 14 (taken as a whole). The opponent’s brand has been subject of long and widespread promotional campaigns in the various Member States, in which goods for mass consumption, namely sporting articles, clothing and footwear, bearing the mark , have been promoted and offered to the general public. The advertisements, publications in various printed and digital media and details about advertising expenditure give some direct indications of the opponent’s investments and its promotional communication and marketing strategies. Furthermore, as especially brought up by the opponent, the brand ‘PUMA’ has been intensively exploited through sponsorships in various sports disciplines, in particular football, athletics, motorsport and sailing. In principle, sponsorships are a strong indicator of reputation, since they show the mark’s degree of attractiveness and its economic value to the outer world. The opponent also submitted information to demonstrate that its brand has often been associated with celebrities and popular sportspeople in recent years, to the extent that the brand has become known beyond the circle of actual purchasers of the relevant goods, in particular in various sports environments, as corroborated by the opponent.

The relevant evidence combined, in particular the annual report and the sales documents provided in respect of the EU (Annexes 5-8) and the references to market expansion to most of the EU countries not only demonstrate the commercial results of the brand, but also reveal the successful and long-standing use of the opponent’s mark over a significant period of time. Furthermore, the opponent also 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. This information was further corroborated with additional statistics and reports on the public recognition of the brand (published by third parties) and is also a strong indicator of the perception of the opponent’s brand.

In addition, the number of articles and other references appearing in different independent sources in relation to the mark (Annex 11) and the active presence of the earlier mark on various social networks and on third-party websites demonstrate that the opponent has undertaken steps to build a strong brand image and enhance its trade mark awareness among the public.

To sum up, it is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. The sales figures, marketing expenditure and market share shown by the evidence and the various references in the press to its success all unequivocally show that the mark enjoys a relatively high degree of recognition among the relevant public.

On the basis of the above, the Opposition Division concludes that the earlier trade mark enjoys a significant reputation in the European Union for the following broad categories of goods within the respective classes:

Class 18: All-purpose sports bags, including athletic and gym bags.

Class 25: Apparel, footwear, headgear.

Class 28: Sporting articles and equipment, including balls, guards and pads.

2. The signs

	PUMA-System
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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).

The element ‘PUMA’, contained in both signs, will be most likely associated throughout the entire European Union 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 related to the goods, or services, in question, it is considered to have an average degree of distinctiveness.

The element ‘System’ of the contested sign will be understood throughout the EU either because it has a proximate equivalent in the respective language or as it is a very basic English word. It may be interpreted in different contexts, in general as ‘a group or combination of interrelated, interdependent, or interacting elements forming a collective entity; a methodical or coordinated assemblage of parts, facts, concepts, etc’, ‘a network of communications, transportation, or distribution’, ‘a set of devices powered by electricity’, ‘any assembly of electronic, electrical, or mechanical components with interdependent functions, usually forming a self-contained unit’ (Collins Dictionary Online, information extracted at https://www.collinsdictionary.com/dictionary/english/system, on 06/12/2018), etc. Bearing in mind that the relevant goods and services are, indeed, goods related to assembled machines, motors and engines (Class 7), electrical devices and computer networks (Class 9), printed matter (Class 16) and various IT services, this element will have a limited distinctiveness (if any) in relation to these goods and services, as it globally refers to them as a unit, entity, network or services related thereof. Consequently, the contested sign’s verbal element ‘PUMA’ will be element of the contested sign that will be paid most to attention by consumers.

Furthermore, account is taken of the fact that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader; in the present case, this is the coinciding verbal element ‘PUMA’, positioned in the initial part of the contested sign.

Visually and aurally, the signs coincide in the word ‘PUMA’, constituting the entirety of the earlier mark and the first verbal element of the contested sign. They differ only in the second verbal element and the preceding hyphen, ‘-System’, of the contested sign, which have no counterpart in the earlier mark. They further differ in the stylisation of the earlier mark. However, as discussed above, the word ‘system’ has only a limited distinctiveness (if any) and the impact of the stylisation of the earlier mark is rather minor, thus, the signs are considered visually and aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning produced by the coinciding word ‘puma’ and given the weak (at most) character of the word ‘system’, they are considered conceptually at least highly similar.

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.

3. The ‘link’ between the signs

As seen above, the earlier marks are reputed and the signs are similar. 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.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that 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.)

For clarity purposes, the scope of goods and services for which the applicant seeks protection will be summarised below.

Firstly, the opposed Class 7 encompasses various machines, machine tools and components, motors and engines (not for land vehicles), which are usually offered to professional public with a certain knowledge or expertise in engineering or mechanics. Such goods are often used in the industry, in particular for manufacturing, treatment of materials or products and processing them through various stages (cutting, milling, welding, drilling, painting, etc.). It is obvious that these goods will be available via very specific distribution channels not open to the general public as their use will require more than a minimum level of know-how.

Furthermore, as regards the contested goods in Class 9, it must be noted that they essentially cover computing products such as computer, mobile and other electronic devices, computer hardware and software, data carriers, peripheral devices, data-processing equipment. Account is taken of the fact that while some of the goods target the general public (computers, mobile phones, headphones, software, etc.), the remainder of the goods, namely computer hardware and software for the management of door and window frame production cycles and installations; computer hardware and software for automation purposes; computer hardware and software for the management of machine tools; warehouse management systems; management systems for door and window frame production installations; communications systems for data relating to the production, assembly, storage, delivery of door and window frames; automatic handling systems for door and window frame production installations; heatdetectors; level indicators; bar code readers; measuring instruments; computer-aided design (CAD) software; software for estimating, selling, designing and producing shuttering and curtain walls; software for programming and managing machine tools; software for checking (supervision) of industrial production and automation; computer programs for estimating, selling, designing and producing shuttering and curtain walls; computer programs for programming and managing machine tools; computer programs for checking (supervision) of industrial production and automation; software for the management of door and window frame production cycles and installations; computer programs for managing shuttering production cycles and installations, are addressed to professional consumers in a highly specialised commercial field. Similar findings may be reached with regard to most of the IT services in Class 42 exclusively rendered to professionals and business consumers, in particular the contested creation, maintenance and adaptation of software; installation, maintenance, updating and upgrading of computer software; computer systems integration services; rental of computer hardware and computer software; design, development and implementation of software; computer software research; computer software technical support services; technical project studies in the field of computer hardware and software; development of computer programs recorded on data media (software) designed for use in construction and automated manufacturing (cad/cam); development of computer software for computer aided design/computer aided manufacturing [CAD/CAM]; upgrading of computer software; development and testing of computing methods, algorithms and software; computer programming; testing, analysis and evaluation of the goods and services of others for certification purposes; computer programming in relation to applications for designing, producing and/or selling doors, windows and partitions; computer programming in relation to applications for managing machine tools and checking (supervision) of industrial production and automation; creating programmes for data processing. As mentioned above, some of the contested goods and services in Classes 9 and 42 refer to electronic devices and equipment or their maintenance that may be, inter alia, of a personal character; hence, these goods and services are as such addressed to general consumers. Yet, even accessible by the general public, it is noted that these goods and services are usually sold in technology or computing stores, or respectively, provided by specialised IT companies.

Finally, the contested goods in Class 16 include printed matter such as books, catalogues and other promotional materials, as well as handbook and user manuals. It has to be regarded that, again, the goods mainly refer to highly specialised pieces of printed matter giving guidance, instructions and advice about particular subject, tool, or machine. With an exception of the general category books, the contested goods in Class 16 will be available in specialised bookstores or directly sold to final customers via the same distribution channels as the said specialised goods to the use of which they refer.

On the other hand, the Opposition Division recalls that the earlier mark enjoys a reputation among the general public, in particular among consumers of sport apparel, footwear and headgear, sport bags and other sport articles and equipment used in sport.

Given the findings above, in the present case, there is evidently no overlap between the relevant market sectors in which the trade marks in dispute do or will operate. The opponent’s reputed goods are in general products worn or used on a daily basis, in particular in relation to outdoor activities, sport and leisure, and incorporate the idea of an active life style. The contested goods, by contrast, are aimed at consumers with essentially different needs, on one side, professionals involved in the industry such as manufacturing, treatment and processing of materials (Class 7), including automatic or computer-aided processes using related software and hardware products and services (Classes 9 and 42), and on the other side, consumers of computing or mobile electronic devices, accessories and services thereof, all these having a personal character. It is obvious that even assuming certain overlap of the different segments of the public, the opponent’s reputed goods remain of a very distinct nature from the contested sign’s goods and services; moreover, these goods and services rely on different marketing strategies and promotional tools, address their target groups in the corresponding specific way and do not, in any stage, coincide in their distribution channels.

By assessing the possible link, the Opposition Division has further to take into account that, when not constricted by any particular context, the word ‘puma’ is not exclusively associated with the opponent’s brand identity and earlier mark respectively. In particular, the Opposition Division notes that even though the opponent enjoys reputation for the mark written in that particular typeface, this factor is counterbalanced by the fact that ‘puma’ is not a fanciful/imaginative verbal element (so to say, a term invented by the opponent) but, on the contrary, remains an existing word, that, moreover, serves to describe a feline animal known for its strength in the common language.

Consequently, it is highly improbable to consider an association between the reputed ‘PUMA’ mark and the applied sign on the basis of the coinciding word ‘PUMA’ when the latter would be encountered in a sufficiently remote commercial field, that is to say, in a commercial area which, in the market reality, is not established as a typical ancillary sector or natural extension of the opponent’s product lines.

In addition, it is also noted that the opponent did not provide any particularly convincing reasoning why an association may occur between the reputed mark in any other commercial sector than its own core business (sport articles, footwear and apparel in general). The opponent merely provided the Opposition Division with some inconclusive or generic allegations without making the effort to put these into the context of the present market reality and to demonstrate in an elaborated manner the existence of the alleged association between its own commercial sector and the sectors of computing goods, industrial machines, printed matter or IT services. Furthermore, the brief references to previous case-law only touched upon establishing of a link in relation to other commercial sectors, not subject of the present proceedings. It has to be, nevertheless, borne in mind that each case in opposition proceedings is examined on its own merits and by considering the relevant circumstances defining that particular case.

In the light of the above findings and, particularly, in the absence of such supportive reasoning and evidence from the opponent, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

For the sake of completeness, it has to be noted that the opposition would have failed also for the other earlier rights on which it is based, including . It may be deduced from the evidence above that none of the other marks enjoy reputation for other goods than the ones already taken into account above. Furthermore, the earlier rights containing the additional figurative element of a pouncing feline are even more distant from the mark examined above and no link would have been established for those marks either.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Vita VORONECKAITE

Manuela RUSEVA

Victoria DAFAUCE MENÉNDEZ

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.