Well-known trademark “PUMA” prevails against “PLUMAflex by Road”

1. Subject matter and background of the action

In its decision of 29 June 2022, the European General Court (EGC) upholds the contested decision of the Board of Appeal of EUIPO dated 6 April  2021. According to the EGC, the EUIPO’s Board of Appeal  correctly ruled an infringement of Art. 8 (5) of the regulation on the European Union Trademark (EUTMR).The basis of the Board of Appeal's decision is Puma SE's opposition proceedings dated 1 August 2018 01.08.2018 against the registration of the EU Trademark “PLUMAflex by Road” (word/device mark) applied for by the applicant on 27 March2018.

The following trademarks are the subject of the case for the goods footwear (except orthopedic footwear):

                           vs.         

EU Trademark No. 12579728                        EU Trademark Application No. OJ 2017 L 154

2. Legal background

The present judgment of the EGC deals with the applicability of Article 8(5) EUTMR and its requirements. This provision is a relative ground for refusal which may be invoked by third parties against the registration of a trademark in opposition proceedings.

The wording of Art. 8(5) EUTMR reads as follows:

"Upon opposition by the proprietor of a registered earlier mark within the meaning of paragraph 2, the mark applied for shall not be registered even if it is identical with or similar to an earlier mark, regardless of whether the goods or services for which it is to be registered are identical with, similar to or dissimilar to those for which an earlier mark is registered if, in the case of an earlier Union mark, it is a mark with a reputation in the Union and, in the case of an earlier national mark, it is a mark with a reputation in the Member State concerned, and the use without due cause of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark. "

The ECG emphasizes that for the applicability of Art. 8(5) EUTMR, the following cumulative conditions must be fulfilled:

• identity or similarity of the marks in dispute
• a certain degree of recognition of the earlier mark

likelihood that, in the absence of due cause, the mark to be registered will take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark addition to the conditions required by the wording of the provision, according to the ECJ, the following additional circumstances are relevant:

• Art. 8(5) EUTMR requires that the public, on the basis of a certain degree of similarity
• Unlike the provision of Art. 8 (1), the provision in (5) does not require a likelihood of confusion. Rather, Art. 8(5) requires that the targeted public establish a connection between the earlier and later marks.
• The relevant public for the assessment of the detriment to the distinctive character or the repute of the earlier mark is the average consumer of the goods or services for which that mark is registered, who is reasonably well informed and reasonably observant and circumspect.

3. The EGC Decision

The Court mainly deals with the finding of similarity, distinguishing between visual, phonetic and conceptual similarity, which are to be examined comprehensively. In line with the Board's decision, it is found that overall similarity is to be affirmed.

As far as the conceptual similarity is concerned, the Court confirmed that the similarity of the marks in the German-speaking area must be taken into account. This is because it is precisely in this area, where the Puma mark enjoys an exceptionally high degree of recognition. The word "pluma" has no meaning and there is no conceptual equivalent of "pluma" in the German language. As a result, the German public is more inclined to associate a meaningless word which is phonetically and visually similar to another word with meaning - as is the case here between “PUMA” and "pluma". Thus, the mental link required by Article 8(5) EUTMR is established. It is true that the word "pluma" has the meaning of feather in Spanish, Portuguese and French, so that there is no conceptual similarity. However, in view of the high reputation of the mark for the German-speaking public, the conceptual similarity in that area alone must be taken into account. In that sense, it cannot be assumed that the mere depiction of a feather is sufficient to convey to the German-speaking public the meaning of the word 'feather' in other languages. A divergent conceptual similarity due to such a hypothetical mental transfer cannot be assumed.

From a visual point of view, the court also confirmed that a figurative element - such as the grey feather in this case - may give a mark a slightly different impression, but does not have the potential to take away its overall similarity to an earlier, well-known mark. This follows from the fact that figurative elements in combination with word elements are only secondarily noticeable in the perception. On the contrary, in the case of marks containing several word elements, the consumer tends, for practicable reasons, to take in only the primary or first  word(s) and to neglect the subsequent ones. In the case of "PLUMAflex by road", this means that the consumer only focuses on the word "PLUMA" when perceiving the mark.

4. Conclusion

With this judgment, the EGC has shown that it applies a very broad standard when assuming a likelihood of confusion with respect to well-known marks. It has clarified that already a similar detail of a trademark, which stands next to other word or design components, can already cause a likelihood of confusion, if this appears as a dominant feature. Furthermore, the EGC has recognized that the degree of awareness may play a role in the context of determining the likelihood of confusion in such a way that the assessment of the similarity of two marks is ultimately affected on the basis of that traffic area in which awareness is of a particularly high degree. It will remain to be seen if the ECG decision is final or appealed to the European Court of Justice (ECJ).

The ECJ Decision dated 29 June 2022 can be found here:

https://curia.europa.eu/juris/document/document.jsf?text=&docid=261888&p...