Published: June 5, 2024
Puma SE, the opposer against the trademark application BERTRAND PUMA LA GRIFFE BOULANGÉRE, lost its trademark battle against the European Union Intellectual Property Office (EUIPO) before the EU General Court on February 28, 2024 (Case T-184/23).
The case started in 2019, when Société d’Équipements de Boulangerie Pâtisserie filed an application for registration of an EU trademark for BERTRAND PUMA LA GRIFFE BOULANGÉRE & DESIGN, covering goods in Classes 7, 9, and 11. Puma filed a notice of opposition to registration of the mark based on, among other things, EU figurative mark No. 12 579 694, which was registered with respect to goods in Class 25 corresponding to the description “Apparel, footwear, headgear.” In a decision of November 11, 2020, the Opposition Division rejected the opposition and on December 17, 2020, Puma filed a notice of appeal with EUIPO.
Puma argued before the Board of Appeal that marks with a very high reputation, as is the case with its relied-upon figurative mark, enjoy enhanced protection under that provision, and one must assume a mental connection between the marks in question.
However, the Board of Appeal reasoned that it was apparent from the case law that the mere fact that Puma’s mark had a high degree of reputation for certain specific categories of goods or services did not necessarily imply a link between the marks at issue. Additionally, the Board pointed out, in essence, that the goods at issue were different, were aimed at different sections of the public, though they overlapped in part, and concerned different markets, which precluded any possibility of association between the marks at issue.
The Board of Appeal also observed that the signs at issue both referred to the same animal, both because of the presence of the word element in common and of its graphic representation, and that the sign applied for differed in an additional word element, that is, BERTRAND, which was likely to be perceived as referring to the identity of someone called “Bertrand Puma.”
In its decision, the EU General Court accepted the Board of Appeal’s views and dismissed the action.
A mark’s reputation might not always be sufficient for success. For a successful action, brand owners have to prove a link in consumers’ minds between the marks.
Kerem Gokmen
Read on INTA.org: https://www.inta.org/perspectives/law-practice/european-union-general-court-rejects-pumas-reputation-based-opposition/
