[Tanja Wittmann, Karin Grau-Kuntz]
In 2013, the Italian company Gemma Group Srl (Gemma) filed an application for registration of an EU trade mark with the EUIPO for “Machines for processing of wood; machines for processing aluminum; machines for treatment of PVC” (Class 7 Nice Agreement) for the following figurative sign:
On 8 July 2013, Puma SE (Puma) filed an opposition according to Article 8(5) of Regulation No 207/2009 – (now Article 8(5) of Regulation 2017/1001) based on the following earlier figurative marks registered for goods of classes 18 (‘Bags to wear over the shoulder and travel bags, trunks and suitcases; especially for apparatus and sportswear’), 25 (Clothing, boots, shoes and slippers), 28 (Games, toys, equipment for physical exercise, equipment for gymnastics and sports (not included in other classes), including sports balls’):
On 10 March 2014, the EUIPO rejected the opposition in its entirety. While the Opposition Division assumed that mark Nr. 2 had an “enhanced distinctiveness”, for reasons of procedural economy, it found it was not necessary to examine the evidence which Puma had filed in order to prove the extensive use and reputation of the mark. It rejected the opposition based on the ground that the relevant public would not establish a link between the opposition marks and the applied for trade mark.
Upon appeal of Puma, the Fifth Board of Appeal (BoA) confirmed the holding on 19 December 2014. Even if one assumed that the reputation of the earlier marks were to be regarded as proven, the opposition would have to fail because the other conditions, namely the existence of an unfair advantage taken of the distinctive character or the repute or the earlier marks or of detriment to their distinctive character or repute, had not been satisfied.
Following the submission of an action by Puma, the General Court annulled in its decision of 9 September 2016 the decision of the BoA. It held, inter alia, that as Puma had relied in support of its opposition on three previous EUIPO decisions that had recognized the reputation of its earlier marks, the EUIPO was required to take those decisions into account and consider, with especial care, whether it should decide in the same way.
On 7 November 2016, the EUIPO lodged an appeal against the General Court’s decision, which the Court of Justice dismissed by its judgment of 28 June 2018 (EUIPO v Puma – C‑564/16 P, EU:C:2018:509).
In its decision of 30 April 2019, the Board of Appeal essentially confirmed the basic findings made by the Opposition Division in the decision of 10 March 2014. Considering now the previous three EUIPO decisions recognizing the reputation of the earlier trade marks the Board of Appeal accepted, first, that the earlier trade mark No 1 had acquired a very substantial reputation for clothing, boots, shoes and slippers and, second, that the earlier trade mark No 2 had acquired a substantial reputation and a high degree of distinctiveness through its use for clothing, footwear, headgear and sports articles not included in other classes. However, the BoA found that Puma had not established the reasons why the positive image of the sports articles covered by its earlier marks positively influenced consumers in their choice of the goods covered by the trade mark applied for, which bore no relation to the concepts of sports, competition, active lifestyle, youth, pleasure and leisure conveyed by the earlier marks. Additionally, the Board of Appeal found that Puma had not demonstrated that the use of Gemma´s trade mark for the mentioned very specific industrial goods could devalue the image of its earlier marks.
On 17 July 2019 Puma lodged an Appeal disputing the BoA’s findings that
– the sections of the public targeted by the goods covered by each of the marks at issue were different,
– there was a (only) a “certain” degree of similarity between the marks at issue,
– the degree of reputation of the earlier marks (only) was “substantial” for specific goods without carrying out out a full examination of that reputation, even though it had been invited to do so by the Court,
– the relevant, and entirely distinct, sections of the public targeted by the goods covered by each of the marks at issue did not established a link between those marks,
– use of the mark applied for was not liable to take unfair advantage of, or be detrimental to, the repute or the distinctive character of the earlier marks.
Concerning the degree of reputation, the Court underlined in its decision that Puma relied for the first time on the exceptional reputation of the earlier marks in the action that gave rise to the judgment of 9 September 2016. As the purpose of an action before the General Court is to review the legality of decisions of the Boards of Appeal of EUIPO within the meaning of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), facts not relied on by the parties before the adjudicating bodies of EUIPO cannot be submitted at the stage of the action brought before the General Court.
Furthermore, the Court emphasized that the three previous EUIPO decisions that had recognized the reputation of Puma´s two earlier marks did not describe the reputation as extraordinary or exceptional, or considered that it goes beyond the relevant public for the goods covered by those marks. According to the Court, it was clear from those decisions that the earlier trade marks had acquired a very substantial reputation for specific goods only.
The Court moreover held that, according to the settled case-law the concept of the unfair advantage taken of the distinctive character or the reputation of an earlier trade mark concerned the risk that the image of the mark with a reputation or the characteristics which it conveys may be transferred to the goods covered by the trade mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier trade mark with the reputation (see judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraph 40 and the case-law cited).
For the purposes of examining whether any unfair advantage has been taken of the distinctive character or the reputation of an earlier trade mark, the Court stated that it was necessary to undertake a global assessment, taking into account all the factors relevant to the circumstances of the case, which include the strength of the trade mark’s reputation and the degree of distinctive character of the trade mark, the degree of similarity between the trade marks at issue and the nature and degree of proximity of the goods or services concerned (see judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 39 and the case-law cited).
Thus, the Court concluded that the BoA was fully entitled to find that the reputation of the earlier marks and the similarity of the trade marks at issue were not sufficient, in themselves, to establish the existence of one of the types of collision referred to in Article 8(5) of Regulation No 207/2009. Furthermore, the BoA had taken correctly into account, for the purposes of its analysis, the differences between the goods covered by the trade marks at issue, “which do not have any point of connection, and the fact that the sections of the public targeted by those goods are completely different”. Moreover, so the Court, Puma was not entitled to rely on the existence of an exceptional reputation of its trade marks.
Finally, considering that the goods in question, namely specialized machinery, had no connection with the concepts of sports, competition, active lifestyle, youth, pleasure, etc. and that no specific evidence or argument to establish a serious risk that the use of the trade mark applied for might be detrimental to the repute of the earlier marks was put in forward, the Court confirmed that the BoA was fully entitled to find that the applicant had not shown that the use without due cause of the mark applied for would be detrimental to the distinctive character of the earlier marks.
Tanja Wittmann; Karin Grau-Kuntz – Würtenberger Rechtsanwälte