OPPOSITION Nо B 3 112 108

 

Puma SE, Puma Way 1, 91074 Herzogenaurach, Germany (opponent), represented by Despacho González-Bueno, S.L.P., Calle Gurtubay 4, 2º dcha., 28001 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Puma S.R.L., Via Alessandro Volta, 17, 20019 Settimo Milanese (mi), Italy (applicant), represented by Safety Brand S.R.L. Società Tra Avvocati, Via Santo Stefano 58, Bologna, Italy (professional representative).

On 28/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 112 108 is partially upheld, namely for all the contested goods in Class 10.

 

2.	European Union trade mark application No 18 165 411 is rejected for all the above goods. It may proceed for the remaining goods in Class 17.

 

3.	Each party bears its own costs.

 

REASONS

 

On 20/02/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 165 411 (figurative mark). The opposition is based on European Union trade mark registrations No 12 579 728, , and No 12 579 694, (both figurative marks). The opponent invoked Article 8(5) EUTMR in relation to both earlier rights.

 

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. The applicant merely claimed that it is already an existing business in Italy since 1970 and it offers soundproofing solutions for third parties in that same territory. It also provided extracts from its own website. Its allegations and the materials provided cannot nevertheless be interpreted as a claim/act of due cause. 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 marks

According to the opponent, the earlier trade marks have a reputation in the European Union.

 

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 12/12/2019. 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, being the same for both earlier marks, namely:

Class 25: Apparel, footwear, headgear.

The opposition is directed against the following goods:

Class 10: Tools for medical diagnostics; diagnostic, examination, and monitoring equipment; audiometers; apparatus for carrying-out diagnostic tests for medical purposes; medical hearing instruments; medical instruments for recording physiological data; sound excluding instruments for medical use.

Class 17: Acoustic screens for insulation; bark coverings for sound insulation; soundproofing materials; quilted wadding articles for insulation; acoustic insulation articles and materials; insulation and barrier articles and materials; insulation sheets.

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 24/02/2020, the opponent submitted the following evidence:

 

Annex 1: 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 until nowadays (featuring the marks a ). It can be inferred from the texts 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. In addition to the above, the opponent provided some articles from national (EU) and international media reflecting the sponsorships referred to. Additional references are provided to the sportsmen referred to within the press kits. The materials are mostly dated as printouts from 2011 but their content encompasses a large time spectrum, including some concerning information from the 90s, whereas others containing references to more recent periods – 2007, 2010, etc.

Annex 2: 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. The opponent’s marks appear throughout the evidence: .

Annex 3: 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 4: 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 of the report), 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 (p. 129-139), which are found in, inter alia, the territories of most of the EU Member States (that is to say, in the relevant territories). The report also provides information on the main commercial segments covered by the brand ‘PUMA’, namely apparel, footwear and accessories.

Annex 5: affidavits, signed by the General Director and Chief Financial Officer of Puma, attesting to the sales of ‘footwear’, ‘apparel’ and ‘headgear’ in, inter alia, France, Germany, Austria, Italy, Benelux, Denmark, Finland, Sweden, Spain, Portugal, Lithuania, the Czech Republic, Slovakia, Poland, Hungary, Estonia, Latvia, Cyprus and Greece from 2008 to 2013. By way of example, the units sold for 2008 are estimated at 63.7 million (net sales of approximately 947 million), whereas the units sold for 2013 are 52,1 million (net sales of approximately 680 million). They also encompass the sales of ‘apparel’, ‘footwear’ and ‘accessories’ for the period 2014-2016, regarding, inter alia, France, Sweden, Italy, Austria, Germany, Finland, Denmark, Benelux, Czech Republic, Poland, Portugal and Spain, and the sales of ‘footwear’ for the same period regarding Spain and Portugal. The witness refers to the use of various trade marks (owned by the opponent) in the labelling of the products, among which also the marks: and . The affidavits are further accompanied by self-produced excel tables containing detailed financial information in relation to total sales concerning the period between 2008 and 2014 or 2015, including information accordantly referred to by PUMA affiliates in the respective Member States (e.g. Puma Germany, Puma Spain, Puma Europe).

Annex 6: 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 2004-2014 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 7: a set of materials illustrating marketing expenses for the relevant period, 2006-2015, containing references to images and videos of final advertising products from the different ‘PUMA’ campaigns managed in the European Union (given per countries as well), 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 8: a set of press clippings (mostly advertisements), divided into separate folders for the years within the period from 2006 to 2012, illustrating the trade marks and 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 9: 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 marks or , 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.

Annex 10: a presentation, entitled ‘King 1968-2008’, showing different shoes from PUMA’s King Eusebio collection and containing also information and photos on the collection throughout the years (from the 1960s to 2008).

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, namely the following (except for one document relating to statistics in the US and the UK):

- an article entitled ‘Verbraucher schätzen Qualität und Marke’ (‘Consumers appreciate quality and brand’, in English), 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, the opponent provided some partially translated references to it and, in addition, 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:

- 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.

- 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. By way of example, the text mentions various projects evolving around the PUMA’s unified and irreverent brand approach to ‘SportLifestyle’ – in particular, the ‘PUMA Phone’, that is again oriented to PUMA’s mission of sustainable sportlife and empowered customers.

- extracts from the book Sports in the Co-opetition of Metropolitan Regions by Gerhard Trosien (available in a digital version at https://books.google.es), 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)’.

- 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… .’

- 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’.

Annexes 12 and 13: a self-produced document listing 96 PUMA stores in various Member States in 2018, including several capitals, among which, Paris, Berlin, Warsaw, Prague, Stockholm, Budapest, Brussels and Rome, accompanied by excel sheets containing references, in pictures, to various stores and outlets, facades and providing addresses or/and date of openings.

Annex 14: extracts from Puma’s employee magazine and Footy Boots shop, where information is provided regarding the sponsorship by Puma SE of Antoine Griezmann, a known French football player, dated 2016.

Annex 15: extracts from publicity materials mentioning commercial relationship between PUMA SE and, inter alia, the popular singer Rihanna (in particular an article at MailOnline, where this is names ‘multi-year partnership’, dated 2017)

Annex 16: catalogues of different PUMA products from 2012 to 2018, including the earlier marks referred to above depicted in various forms and appearing, inter alia, on pieces of apparel, footwear and headgear.

Annex 17: a self-produced document containing a list of ambassadors of PUMA trade marks, being worldwide athletes of multiple sports, as well as pop celebrities, together with pictures showing them wearing PUMA-branded articles of apparel, footwear and headgear. The document further contains a listing of various teams supported by the opponent’s brand, including teams formed by nationality and coming from EU countries such as Austria, Malmo, Italia, Czech Republic, Slovakia, Valencia, etc.

Annexes 18 and 19: consumer survey, accompanied by translation from German to English, on the awareness and distinctive character of ‘PUMA’ in Germany, conducted by GfK SE in May 2018 among 1 055 respondents. Following the survey’s results, ‘in the overall population (broadest class of persons) and in people who buy or use sportswear and sports lifestyle clothing and footwear or who might consider buying or using sportswear and sports lifestyle clothing and footwear (narrower class of persons), the name ‘PUMA’, even without connection to goods and services, has an extremely high level of, or a unanimous recognition: 97.5% and 99.2%, respectively.’

Annex 20: consumer survey on the awareness and distinctiveness of the term ‘PUMA’ in Italy, conducted by GfK SE in October 2018 among 1 114 respondents. Following the survey: ‘The awareness of the term PUMA without product or service reference is already on a very high level among the general population (widest group of market participants) as well as among people who buy or use / wear sportswear and sports-lifestyle-clothes and sports shoes or for whom buying or using / wearing such products is not out of question (closer relevant public): i.e. 84.2% and 94.1% respectively.’

In addition, in its observations the opponent further refers to previous cases of the Office and the General Court of the EU, in which or , have been touched upon and conclusions about their alleged reputation have been drawn.

Analysis of the evidence and conclusion

The opponent’s brand, represented as the word ‘puma’, used in a particular stylisation, or by the combination of that word and a device , has been present and intensively used on the market for more than 70 years; as result, the brand has built up a strong corporate and brand identity and is, nowadays, globally associated with particular values. These findings hold true also with respect to consumers in the EU as main target group, at which significant part of the investments were directed throughout the years.

As demonstrated in the materials, 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 marks and , have been promoted and offered to the general public. The advertisements, publications in various printed and digital media and details about advertising expenditure contained in some of the annexes (e.g. Annexes 2, 3, 7, 8, 10) 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 has been intensively exploited through sponsorships in various sports disciplines, by way of example, in athletics, collective sports such as football, volleyball, rugby or cricket, 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, featuring the signs and , has often been associated with celebrities and popular sportspeople in the past and also 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 materials when seen in conjunction with each other, in particular the annual report and the sales documents provided in respect of the EU 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 marks 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 surveys on the public recognition of the marks or , published by third parties or inquired in commissioned by the opponent surveys (on selected Member States such as Germany and Italy), and is also a strong indicator of the perception of the opponent’s brand as a whole. As already noted above, the opponent’s brand shows very high degree of recognition by the public already at the level of spontaneous or unaided awareness, that is how many respondents, expressed in percentage, may quote the brand names without further assistance.

In addition, the number of articles and other references appearing in different independent sources in relation to the marks and and the active presence of the earlier marks on various social networks and on third-party websites demonstrate that the opponent has not only undertaken steps to build a strong brand image and enhance its trade marks awareness among the public, but also to maintain the positive public’s perception of the brand’s values and mission and to transmit the messages its brand embodies.

Finally, even though previous decisions of the Office or of other national authorities are not binding, they can be relied upon by the Opposition Division insofar as they are deemed persuasive and relevant to the case. In the opinion of the Opposition Division, the evidence submitted as regards reputation must be assessed comprehensively and the fact that reputation (of the earlier marks at issue or of parts of them) has already been recognised by the Office in other proceedings should be taken into consideration (28/06/2018, C-564/16 P, DEVICE OF A JUMPING ANIMAL (FIG. MARK) / PUMA (FIG. MARK) et al., EU:C:2018:509 and 22/05/2019, T-161/16, CMS Italy (fig.) / PUMA (fig.) et al., EU:T:2019:350, §§ 50, 51). It is even incumbent on Office to provide an explicit statement of its reasoning were it to depart from the approach adopted in the earlier decisions on the issue of the reputation of the earlier marks examined in those decisions if they are the same as in the matter at hand (28/06/2018, C-564/16 P, DEVICE OF A JUMPING ANIMAL (FIG. MARK) / PUMA (FIG. MARK) et al., EU:C:2018:509, § 76).

To sum up, it is clear from the evidence that the earlier trade marks and have been subject to long-standing and intensive use and are generally known in the territory of the European Union, where they enjoy a consolidated position among the leading brands in the field of sport apparel, footwear and headgear, as has been attested by diverse independent sources. The sales figures, marketing expenditure, market share and degrees of public recognition illustrated by the surveys, as well as the various references in the press to its success, all unequivocally show that the marks enjoy a very extensive degree of recognition among the relevant public.

For reasons of procedural economy, the Opposition Division will only proceed with respect to earlier mark , as it considers it the trade mark with greater proximity to the applicant’s sign, since it does not contain the additional leaping puma-device that has no counterpart in the contested sign.

 

b) The signs

Earlier trade mark	Contested sign

 

The relevant territory is 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 common verbal element ‘PUMA’ of the signs will be most likely associated throughout the relevant territory with ‘a large American feline mammal, Felis concolor, that resembles a lion, having a plain greyish-brown coat and long tail’ (information extracted for the entry ‘puma’ at https://www.collinsdictionary.com/dictionary/english/puma, available online on 15/06/2021). Since it bears no relation to the goods, this word is considered distinctive in both signs.

The Opposition Division considers it worth mentioning that the applicant claims the verbal element ‘PUMA’ of the contested sign to be made up of the first syllables of the owners’ surnames - Olga Puggioni and her husband Angelo Muselli. Moreover, it also argues that the applicant’s company existed for many years now and has acquired recognition on the Italian market. The applicant’s allegations are without subject and have not been supported by any substantial evidence that would prove such claims. As a matter of fact, the Opposition Division notes, that the first syllables of the surnames form the verbal element ‘PUMU’ instead of ‘PUMA’, that is to say, a word that differs from the sign applied for. By all means, unless otherwise trained (the evidence to which lacks in the present case), consumers will not tend to perceive the family names within the sign but rely on their first and overall perception that will be, as commented above, of the feline animal. Moreover, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM. Consequently, without the proof of due cause in that respect, the opponent’s allegations have to be dismissed.

The word ‘soundproofing’ of the contested sign is an English word meaning ‘special material put in a room or building in order to prevent sound from passing out of or into it, or the act of putting in this material’ (accessible at https://dictionary.cambridge.org/dictionary/english/soundproofing, available online on 15/06/2021). This word is descriptive, hence non-distinctive, in relation to the goods in Class 17 that are in their nature soundproofing materials. It is also void of distinctiveness, or at best weak, in relation to some goods in Class 10, to the extent that they are or may be instruments related to hearing, e.g. audiometers, sound excluding instruments for medical use. For the rest of the goods, as well as for the part of the public that does not understand this word, it will be of a normal distinctiveness. Nevertheless, its secondary position and much smaller size evidently display it as a non-dominant element of the sign, that is to say, it is less visually eye-catching and striking than the element ‘PUMA’. Moreover, due to its secondary character and lesser degree of distinctiveness, whenever applicable, and taking into account the principle of economising (03/07/2013, T 206/12, LIBERTE american blend, EU:T:2013:342, § 43-44), this element is highly likely to be omitted by aural reference to the brand.

Finally, the figurative components of both signs are considered mere embellishment and their impact on the perception of the signs remains limited or not significantly affecting the comparison.

Consequently, the signs under comparison are similar to the extent that they have in common the distinctive element ‘PUMA’. Following the above findings, this leads to a high visual, aural and conceptual similarity, whereas it cannot be excluded that in some respects that signs may be even identical (e.g. aural reference).

 

c) The ‘link’ between the signs

 

As seen above, the earlier mark is reputed and the signs are overall highly 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.

It is first to be noted that the earlier mark is considered inherently distinctive in the European Union for the goods in Class 25 as it bears no relation to them. Moreover, as concluded above, the opponent’s mark enjoys an extensive degree of reputation in relation to sport apparel, footwear and headgear, whereas this reputation seems to have been transferred, to a certain degree, to other sports articles also sold by the opponent under the mark, such as sport accessories and equipment. On the other hand, the contested application seeks protection for various hearing devices, medical equipment for diagnostics, examination and monitoring (Class 10), as well as acoustic insulation articles and materials (Class 17).

It is to be noted in that respect that the establishment of a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods 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.)

Nevertheless, 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.)

In the present case, the Opposition Division considers that consumers will indeed make a mental link with the opponent’s mark whenever the goods concerned may be fitted into the realm in which the opponent performs its commercial activity or is known to have equally spread its engagements from a social and economic perspective, that is, the sport lifestyle.

Link established for the goods in Class 10

The Opposition Division notes from the outset that the connection between sport and health is undeniable. This connection is two-fold: sports bring many benefits to people who practice them, one of which is the improving of the overall physical and mental status, and people who practice sports actively take care of their health status, as it has a major impact on their overall performance. Having clarified that, the Opposition Division is of the opinion that, without further specification, the goods listed under Class 10 of the applicant’s sign may be broadly understood as any type of monitoring/diagnostic/examination apparatus that would, inter alia, allow monitoring and tracking the activity of the human body while training. Nowadays, the market reality shows that many consumers who do sport will often equip themselves with variety of garments for sports, the main function of which is to monitor and examine various factors of their health status, including by constantly recording their physiological data. By way of example, runners would have at their disposal heart rate chest-straps, running pace monitors, watches or even headphones, and will stay connected with applications that will collect and summarize the data acquired for latter procession and examining of their sport results. In the light of the above, the Opposition Division sees a clear link between the opponent’s core brand mission of promoting sport lifestyle and some of the contested goods such as: tools for medical diagnostics; diagnostic, examination, and monitoring equipment; apparatus for carrying-out diagnostic tests for medical purposes; medical instruments for recording physiological data; medical hearing instruments. Indeed, nothing in the nature of these goods, or the wording thereof, as applied for, speaks that these devices are exclusively addressed to medical practitioners and hospitals or health institutions. On the contrary, the Opposition Division considers that they may be made available also for the general consumer, with or without prescription from a medical person.

Moreover, it cannot be ruled out that these types of goods may constitute home medical equipment, namely a category of devices used for patients whose care is being managed from a home or other private facility managed by a nonprofessional caregiver or family member. Such medical equipment is intended to withstand repeated use by non-professionals or the patient and is appropriate for use in the home. Further on that line, it is a well-known fact that physical inactivity is associated with a wide range of diseases and, in many cases, patients would be encouraged, or prescribed, to practice sport within the frame of their own rehabilitation or to alleviate the symptoms of a disease and improve their physical performance. Consequently, the Opposition Division cannot preclude that, by promoting a healthy and sport lifestyle, the opponent’s company may reach out for patients with diseases, or sportsmen with injuries, who need specific equipment for doing sport. This can be further the case with the contested medical hearing instruments, which can be seen as medical equipment that targets sportsmen with impaired hearing. As can be deduced from the documents provided by the opponent (e.g. annual report, press releases), the company is constantly observing such themes as consumer sustainability and empowerment and adopting its marketing strategy or business towards these directions, in particular including any consumers who practices sport regardless of their medical conditions.

With respect to the contested audiometers, the Opposition Division notes that these are devices that play sounds to test the patients hearing ability. These devices are nowadays available not only as medical equipment in health institutions but also through more open distribution channels, to which also general consumers may have access, and in more compact and functional formats (e.g. manual devices for fieldwork, devices using batteries). Since hearing may be a crucial skill in exercising particular sports, such tests may be indeed needed to be run on a daily basis and it cannot be completely excluded that they target, by way of example, athletes or other sportsmen who perform activities where hearing plays a crucial role and needs to be kept intact despite any side effects of the sport. In that same line of reasoning, the contested sound excluding instruments for medical use may be seen as protective devices who serve for preservation of the hearing. These can be used by sportsmen to diminish the outer noise, e.g. shooting, motorsports, and/or ensure them a tranquil sport activity (e.g. running).

Therefore, taking into account and weighing up all the relevant factors of the present case, provided that the earlier mark enjoys a very high degree of reputation, it must be concluded that, when encountering the contested mark, in relation to the goods in Class 10, as applied for, the relevant consumers will be likely to associate it with the earlier sign or at least can be reminded of it, that is to say, it will establish a mental ‘link’ between the signs. 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).

No link and/or injury established for the goods in Class 17

 

As concerns the goods in Class 17, however, the Opposition Division is of the opinion that no link would be established.

The target public of the opponent’s reputed goods are consumers who require basic goods on a daily basis in order to get dressed and prepare for sports and leisure. The reputation, as claimed and proven, establishes a goodwill and positive image in the sense of sports, active life and leisure. The contested goods in Class 17, by contrast, are aimed at consumers with essentially different needs, namely professionals involved in the soundproofing field (Class 17) who may need these goods to incorporate them in the building/room structure. Following these references, there is evidently no overlap between the relevant market sectors in which the trade marks in dispute do or will operate. It is obvious that even assuming certain overlap of the different segments of the public, the applicant’s goods remain of a very distinct nature, manufacturing processes and incorporated know-how; these goods rely on different marketing strategies and promotional tools, they differently address their target groups in the corresponding specific way and do not, in any stage, coincide in their distribution channels (e.g. outlets for sport apparel, footwear and accessories versus technical stores for soundproofing materials in their raw form). Consequently, it is highly improbable to consider an association between the reputed earlier marks and the sign applied for 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 that respect, the General Court recalled that the dissimilarity between the goods respectively designated by the marks at issue – and between the publics targeted by these goods – is not a sufficient factor for excluding the existence of a link between those marks since there may be instances where the reputation of the earlier mark is so strong that it extends beyond the public targeted by that mark. However, this is not the case at hand as the goods are not only dissimilar, they are so to say, highly dissimilar, or absolutely distinct. Moreover, although it is conceivable that in certain circumstances the sections of the public who are the target of the goods designated by the marks at issue may overlap (29/03/2012, BEATLE, T-369/10, EU:T:2012:177, § 53), and that a specialised public may be familiar with the earlier mark covering goods aimed at the general public, that is not sufficient by itself to demonstrate that that specialised public will establish a link between the marks at issue (19/05/2015, SWATCHBALL, T-71/14, EU:T:2015:293, § 32).

Moreover, the onus is on the opponent to prove its arguments, especially when they are not self-explanatory or obvious. However, the opponent has not submitted any arguments or evidence that would support its reasoning and that would allow the Opposition Division to adduce otherwise. Consequently, despite being known outside of its natural commercial sector of sport apparel, footwear and headgear, the opponent has not demonstrated any application of its trade marks that goes completely beyond the realm of sport activities and leisure of its consumers and concerns other types of goods meant for different consumers, including professionals from the above addressed areas. The mere fact that professionals operating in the soundproofing field may also purchase sports shoes or clothing cannot prevail in that respect.

Undeniably, where the industries under examination happen to be so far apart from each other and the Opposition Division cannot justify a natural expansion of the opponent’s brand based on well-known facts or market trends with which consumers are generally familiar, the justification that consumers will make that mental step must in principle originate from the party claiming so. In the present case, the opponent merely states the following:

In the same sense, we consider that although the goods in class 17 […] could be considered to be distant from the market for textile products, we consider that an association between the contested sign and the earlier marks remains more than possible. As we have explained, the similarities are striking (in the graphic and in the identity in the PUMA element) and, above all, we must not forget that the previous marks enjoy an exceptional reputation.

It should be mentioned that the opponent has also cited several earlier decisions in which the Office previously recognised reputation with regard to a number of the opponent’s earlier marks. The opponent accordingly relied on these decisions as favourable precedents in support of its claim of reputation, and in particular, drawing the attention to a few cases that support the existence of a link between the opponent’s reputed goods and other goods found of a sufficiently close nature as to trigger an association (e.g. opposition decisions B 2 811 340 and B 2 991 274). However, the brief references to previous cases or to case-law only touched upon the establishment of a link in relation to other commercial sectors not subject to 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. Consequently, despite some factual similarities, the Opposition Division cannot draw conclusions solely basing itself on these decisions.

Finally, despite being of inherently normal distinctivenes and having achieved the status of unique identifier of a particular business, the word ‘puma’ cannot be attributed as a fanciful word or a word invented by the opponent. Again, even though the Opposition Division acknowledges the wide spread promotion of the brand within the sport realms, the Opposition Division cannot automatically preclude that consumers will intuitively associate that same word with the opponent’s brand when bluntly extracted from its context of sport and put into completely different fields that do not have any crossing point. That would mean giving the opponent an exceptional scope of protection for any goods of professional character relied on arbitrary assumptions, rather than let the opponent carry the burden of demonstrating the existence of such link. As commented above, the opponent has failed to explain why these completely different target groups would make a connection between the marks at issue that, even similar to a certain degree, are protected for goods that belong to entirely different market sectors.

Therefore, taking into account and weighing up all the relevant factors of the present case, 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 (see a reference to 27/11/2019, R 404/2019-1, Puma-system / PUMA (fig.) et al., § 94), insofar as it concerns the goods in Class 17.

In its observations, the opponent states, in general terms, that the earlier mark’s distinctiveness will be detrimentally affected by the contested sign, that the mark applied for is ‘parasitic’ and will dilute the earlier marks’ ability to identify a single undertaking and that the applicant will free-ride on the goodwill created under the opposing marks. This merely paraphrases the text of the law but does not address at all the specific goods against which the opposition is directed and for which the opponent seeks to prohibit the use of the contested mark. Apart from referring in very general terms to common characteristics such as excellence, comfort, adaptability, reliability, and style that are claimed by the opponent to contribute to the positive image of its ‘sports articles’ as opposed to chemical character and complexity of any insulating materials in general, it has not been demonstrated how use of the contested mark for entirely different goods in a specialised market sector could in any way devalue such image or take advantage of it. In that sense, the opponent in fact demonstrated that the consumer might think of the positive associations and messages conveyed by the earlier mark’s product as ‘pleasure’, ‘vitality’, ‘fastness’, ‘youth’. The image arising from the earlier mark will then hardly be transferable on the goods for which the applicant applied, especially giving consideration to their peculiar nature and use. The Opposition Division sees then no way in how consumers may be affected positively into changing their market behaviour and performing a purchase or into negatively affecting the strength of the distinctiveness or the good image of the earlier mark/s. These assumptions of the opponent are highly hypothetical and, while no actual detriment needs to be proven, the opponent must convince the Office by adducing evidence of a serious future risk or detriment. In the case of a transferring a positive image due to the incompatible market sectors when projecting different qualities and values of the goods concerned such an injury is not plausible. As far as any other adversary effects on the distinctiveness or reputation of the earlier mark may be concerned, e.g. dilution of the image accompanying the word ‘puma’ or the ‘feline device’, the opponent should have relied on further evidence or logical deductions made from analysis of the probabilities (and not mere suppositions) and by taking account of the normal practice in the relevant commercial sector as well as of all the other circumstances of the case (16/04/2008, T-181/05, Citi, EU:T:2008:112, § 78, as cited in 22/05/2012, T-570/10, Répresentation d’une tête de loup, EU:T:2012:250, § 52; confirmed 14/11/2013, C-383/12 P, Répresentation d’une tête de loup, EU:C:2013:741, § 42-43).

In sum, even if the establishing of a link between signs were plausible, the opponent still has failed to provide a coherent line of arguments which shows that use of the contested mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier marks. Following that, as one of the necessary conditions for the opposition to be successful under Article 8(5) EUTMR would not have been fulfilled, the opposition must have been still rejected in its entirety (see a reference at 30/04/2019, R 2057/2018-4, DEVICE OF A JUMPING ANIMAL (fig.) / PUMA (fig.) et al. § 33-41).

 

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.

 

The opponent claims the following:

 

The earlier trademarks possess an exclusive character, in the sense that consumers associate it with a single source of origin.

The distinctiveness of the earlier marks will be detrimentally affected since the public will cease to associate it with a given range of high-quality products originating from a single source and start associating it with different goods, having distinct origins. Such an association will invariably dilute the earlier trade marks’ ability to identify a single undertaking, and is likely to diminish its capacity to stimulate the desire of the public to buy the products for which it is registered.

We consider that the EUTM application is a parasitic mark that may deprive Puma’s earlier marks of their distinctive character and hence of their attractiveness. If the contested EUTM is registered, it will benefit from the attractiveness of the earlier right by affixing on its goods a sign which is widely known in the market, misappropriating thus its attractive powers and advertising value. The applicant will free-ride on the investment of the opponent in promoting and building-up a goodwill for its mark.

 

In other words, the opponent claims that 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.

 

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 proprietor of the earlier mark bases its claim on the following:

 

 The Puma marks have not only acquired a high degree of distinctiveness, but they also reflect an image of excellence, reliability, and quality, which positively influences consumers’ choice.

 There are undeniable visual, aural, and conceptual similarities between the signs that will trigger the link between the signs even for dissimilar goods.

 The applicant will unfairly benefit from the prestige of the earlier marks without making any attempt to promote the contested mark on its own merits.

 

As established above, the opponent has built up its brand’s identity and reputation around the concept of ‘a puma’ (as an animal) used in various contexts by promoting its products, especially by playing with the positive associations which brand to mind as a ‘fast runner’ by nature having a particularly ‘slender and agile body structure’. As the opponent claims, its trade mark represents a brand relying on long-standing traditions in manufacturing quality products and that, moreover, conveys a particular image, with values such as strength, speed and active sporting spirit, and transmits content-related messages among its consumers, for instance the brand’s motto of 2013 ‘Forever faster’. Furthermore, the 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 and fostered the exclusive presence of the ‘puma’ brand and the concepts behind, in particular sport lifestyle, on the market. Finally, the opponent is constantly trying to explore new areas evolving its sport-lifestyle-related projects.

Consequently, by introducing a new ‘PUMA’ mark in a field that can be to a certain extent associated with the opponent’s brand – as the relationship between sport and health shown in the previous section, the applicant may intentionally or unintentionally benefit from the association that consumers will make with the qualities of the earlier marks without having paid the cost thereof. This will grant the applicant with an unjustified advantage and may boost its sales by simply using the opponent’s marks as a marketing vehicle for commercial developing and expansion.

On the basis of the above, the Opposition Division concludes that the use of the contested trade mark is likely to take advantage of the reputation of the earlier trade mark.

 

f) Conclusion

 

Considering all the above, the opposition is well founded under Article 8(5) EUTMR insofar as it is directed against all the contested goods in Class 10.

As concluded in section c) of this decision, the opposition is not successful insofar as the remaining goods in Class 17 are concerned. It must be added that the outcome would have been the same even if earlier mark EUTM No 12 579 694 was also set to be under analysis above. This is because this earlier mark contains an additional component, namely a figurative device, that finds no counterpart in the contested sign, and no different findings would have been reached with respect to the existence of a link or any potential injury in relation to that earlier right for the goods in Class 17.

Since the Opposition Division tackled certain points from the previous decisions referred to by the parties in the bodies of the above sections ‘Link between the signs’ and ‘Risk of injury’, it does not consider it necessarily to address each of these case alone. Findings from previous cases cannot be generalized and applied outside of their context. Indeed, each case has to be dealt with on its own merits. Consequently, the fact that some of the cases may reflect similar circumstances and facts is not itself sufficient to play a decisive role in reaching the above outcomes.

COSTS

 

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

 

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

María del Carmen SUCH SÁNCHEZ

Manuela RUSEVA

Enrico D'ERRICO

 

 

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.