Even public awareness of a trade mark’s reputation may not be enough to establish the mental ‘link’ needed for a reputation-based opposition
In Case T-4/22 the General Court of the EU (“GC”) upheld the EUIPO’s rejection of an opposition by sportswear giant Puma SE (“Puma”) to an application by DN Solutions Co. Ltd (“DNS”), a manufacturer of machine tools. The EUIPO found no “link” between the marks in dispute and therefore no risk of damage to the reputation of the Puma, which had opposed under Article 8(5) of the EU Trade Mark Regulation.
Puma relied on its earlier figurative PUMA international registration (below left), protected in various EU countries for goods in classes 18, 25 and 28, in summary: bags, clothing and sports equipment. The opposed mark, also a figurative PUMA sign (below right), was filed for ‘Lathes; CNC (computer numerical control) lathes; machining centres; turning centres; electric discharge machine’ in Class 7.
At the EUIPO Puma failed to demonstrate that DNC’s mark would infringe its earlier mark under Article 8(5), which prohibits registration of a mark which is identical or similar to an earlier trade mark with a proven reputation in the EU, where that use, without due cause, would take unfair advantage of, or be detrimental to the distinctive character or the repute of the earlier trade mark, even where the respective goods are dissimilar.
These underlined words recognise that well known trade marks have an economic value independent from the goods or services for which they are registered, allowing protection to be invoked even against use in relation to dissimilar goods. However, to succeed in an opposition under Article 8(5) (or an equivalent infringement claim) each of the cumulative conditions must be established – i.e. (i) identity or similarity of marks, (ii) reputation/distinctiveness of the earlier mark, (iii) lack of due cause for use of the later mark, (iv) and proof of detriment to, or taking unfair advantage of, the earlier mark’s reputation. Failure to satisfy just one condition is sufficient for the action to fail.
The GC agreed with the Board of Appeal that the marks were visually highly similar if not almost identical (both consisting of the word PUMA in almost identical font), phonetically identical, and conceptually identical (both being a reference to a big cat). The GC also agreed that Puma’s earlier mark had a very high reputation for clothing and footwear in Class 25 and that even GC’s specialist target public for goods in Class 7 (lathes, etc.) would be aware of Puma’s reputation.
For the purpose of assessing Puma’s opposition the parties agreed that the ‘relevant public’ for the Class 7 goods was a specialist and professional public/business or technical professional, and was the general public for Puma’s earlier mark. The GC held that although a specialist public would form part of the wider public, that does not make it part of the relevant general public for the purpose of Article 8(5). The finding that the relevant publics were completely different was therefore upheld.
For an Article 8(5) opposition (or an infringement claim based on the same test) to succeed, it must first be found that the relevant public would make a mental ‘link’ between the earlier and later mark when first encountering the later mark. Mere awareness of the earlier mark alone is not sufficient to create the requisite mental association or link between the marks: something more is required (although it is not necessary to show confusion as to origin).
Puma claimed that circumstances could arise where the relevant public would ‘link’ the two marks – for example if Puma were to diversify by extending into machinery, if the relevant public believed there were a commercial collaboration between DNS and Puma, or if DNS marketed clothing as promotional goods. These examples were rejected as implausible and failing to address the fact that the goods covered by the marks at issue belonged to completely different business sectors.
In light of the specific nature of the goods covered by DNS’ application and the sector to which they belonged, and of the specific nature of the public at which they are aimed, the GC held that a link would not be made by the relevant public between the marks, despite the strength of the reputation of Puma’s earlier mark, its distinctiveness, and the similarity of the two signs. Without the requisite link, the use of DNC’s mark would be unlikely to cause the damage envisioned by Article 8(5), namely taking unfair advantage of, or being detrimental to, the distinctive character or repute of Puma’s mark.
This cautionary decision is a reminder that even when an earlier mark has a strong reputation and the later mark is very similar to it, a reputation-based opposition or infringement claim can still fail if the relevant public would not form the all-important mental link between the two marks.