PUMA, the well-known sports shoe brand, objected to the European registration of the word mark PUMA-System. According to the firm’s website, the latter brand appears to be used for a solution for programming multi-axis profile machining centers. However, the registration of the word mark PUMA-System was also sought for many other goods and services, such as headphones. But not for shoes or clothing.
Protection of well-known brands
Nevertheless, shoe and clothing manufacturer PUMA did think that the use of PUMA-System could be detrimental to its own well-known trademarks and relied, among other things, in its opposition on Article 8(5) of the European Trademark Regulation. That article specifically provides for the protection of well-known trademarks: registration of an identical or similar trademark shall also be refused when the goods or services for which it is applied are not similar to the goods and services for which the earlier well-known mark is registered, where the earlier trade mark has a reputation and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. The owner of a well-known trademark does not have to prove that there is already damage. It is enough if he can demonstrate that such damage could occur in the future.
The case recently reached the EU General Court. In addition to addressing several procedural issues, the Court also issued a number of statements about the scope of protection of well-known brands such as PUMA.
Confusion is not a requirement
Proving a likelihood of confusion is not required when invoking said Article 8(5). It is sufficient that there is a link, an association, that later mark will be likely to bring the earlier mark to the mind of the relevant public. The likelihood of that link has to be established, taking into account all the circumstances of the case, including the degree of similarity of the trademarks, the extent of the reputation, the distinctive character of the earlier trademark, but also the nature of the goods and services. While similarity of goods or services is not a requirement, conversely, the goods or services for which both trademarks are registered or applied for can be so very different from each other that it seems very unlikely that the relevant public will associate the trademark applied for with the earlier well-known mark.
The specialized public
What makes this case somewhat complicated is that the trademark PUMA-System was applied for many and very diverse goods and services.
Initially, PUMA's request to refuse the registration of PUMA-System was rejected in its entirety, as it was considered unlikely that the public would establish a link between the signs at issue. However, it was found on appeal that a distinction had to be made between the general public and the specialist public in the wood and metal industry. And that there was some overlap between both.
As sports brand PUMA is very well-known in the European Union, the general public was likely to establish the required link for some of the goods and services. The "complementary" nature of some of the relevant goods and services, such as headphones and mobile telephones, was taken into account, as they are often used in sports activities.
The specialist public, in this case professionals in the wood and metal industry, may very well be aware of the well-known sports brand PUMA, but it was thought unlikely that they would link the machine-related PUMA-System trademark to the trademarks of shoe manufacturer PUMA.
Link between brands
This is not a unique case. In an earlier, similar opposition case, between fashion house Prada and The Rich Prada, a Bali based hotel, Prada had also failed to demonstrate the existence of a link between its well-known trademarks and the trademark application of the The Rich Prada, with regard to some of the, very different, goods and services, such as road maintenance and mining services.
A single link or association with an earlier (very) well-known trademark can therefore suffice to refuse registration of a trademark, even if that trademark has been applied for different goods or services. But that link or association is not a given, it must be factually established, no matter how well-known a trademark is. All circumstances must be taken into consideration.
This case highlights the importance of a careful specification of the goods and services for which you want to register your trademark. The right classification of goods and services can save a trademark owner a lot of problems and proceedings.