On March 10, 2021, the European General Court (EGC) ruled on the appeal against a decision of the European Union Intellectual Property Office (EUIPO) in the case „Puma v. Puma-System“.

The registration of the „Puma System“ trademark as the beginning of the legal dispute

The starting point was the following facts: In 2017, the registration of the trademark „Puma-System“ for machines for working and processing wood and metal as well as the associated software and services was published.

Although the registration of the trademark „Puma-System“ concerned largely unrelated classes of goods and services, the German company Puma SE, which itself sells clothing in the sports sector, filed an opposition against the trademark registration with the EUIPO. Puma invoked Art. 8 para. 5 of the EU Trademark Regulation (EUTMR) and referred to its own well-known and earlier trademark.

The Board rejected the opposition against the registration of the trademark. Puma did not agree with the reasons for this decision and therefore brought an action before the European Court of Justice (ECJ). This was to overturn the decision of the Board.

EGC: Protection against trademark application in case of risk of damage to reputation

In its judgment, the EGC first emphasized that Art. 8 para. 5 EUTMR guarantees the protection of a mark with a reputation against the registration of an identical or similar mark which could damage the reputation of the mark.

This applies even if the goods covered by the mark applied for are not identical or similar to those for which the earlier mark is registered. However, three conditions must be met: 1) That the conflicting marks are identical or similar, 2) that the earlier opposing mark is well known and 3) that there is a risk that the distinctive character or repute of the earlier mark will be unfairly exploited through the use of the mark applied for.

Prerequisite for protection: the public must make a connection to the well-known trademark

The judges further stated that the risk of exploitation of the distinctive character or repute of the earlier mark presupposes that the relevant public to whom the marks are addressed establishes a certain link between the marks.

In assessing this question, the EGC found that the mere fact that a trade mark applied for and an earlier trade mark are similar and that the earlier trade mark enjoys an exceptional reputation is not automatically sufficient to affirm the existence of a link between the respective trade marks. Rather, a case-by-case examination must always be carried out.

Only partial success for Puma after long legal dispute

In the opinion of the EGC, the Board of Appeal only carried out this examination incompletely: In its examination, it had focused on the highly specialized goods covered by the mark applied for, which are aimed at professionals in the sector. However, the Board failed to take into account that the mark also covers a range of goods and services which are not exclusively aimed at a specialized public, but also concern the general public.

In its judgment, the EGC therefore partially overturned the decision of the Board of Appeal and extended the contested trademark registration to a much wider area. After years of litigation, this decision is only a partial success for Puma, which at the same time brings the certainty that despite a high level of brand awareness, one does not automatically enjoy protection from the registration of a similar trademark.