The General Court of the EU ruled in case T‑62/16 Puma SE v EUIPO and Doosan Machine Tools Co. Ltd.
The case concerns an attempt by Doosan to register the following European trademark in class 7: Lathes; CNC (computer numerical control) lathes; machining centres; turning centre; electric discharge machine. Puma claimed a mark with a reputation on top of that.
Against this mark, an opposition was filed by Puma based on the following earlier marks for Classes 18,25, 28, one of them for Class 7 too:
EUIPO rejected the opposition stating that the goods are so dissimilar that there are no possibilities for consumer confusion especially bearing in mind the fact that the relevant public in both of the cases is different.
Puma appealed this decision.
The General Court sided with the German company and annulled the EUIPO’s decision with the following arguments:
It follows from the considerations set out in paragraphs 68 to 71, 77 and 78 above that the Board of Appeal, first, did not properly take account of the degree of reputation relied on by the applicant and, secondly, did not properly assess the degree of inherent distinctive character of the earlier marks in its examination of whether there was a link between the marks at issue in the mind of the relevant public.
It should be recalled that the strength of the reputation and the degree of distinctive character, inherent or acquired by use, of the earlier marks may have a significant effect on the assessment of whether there is a link between the marks at issue.
In accordance with the case-law, certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, the relevant section of the public as regards the goods or services for which the later mark is registered might make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.
Thus, where the public concerned by the goods designated by the earlier mark and the public concerned by the goods designated by the mark applied for are distinct, it may be necessary to take account of the strength of the reputation of the earlier mark in order to determine whether that reputation extends beyond the public concerned by that mark.
Therefore, in the present case, even if there is no direct link between the goods designated by the marks at issue, which are dissimilar as the Board of Appeal found in paragraph 32 of the contested decision, the finding of an association with the earlier marks could, nevertheless, still have been possible if the Board of Appeal had properly taken account of the degree of reputation relied on by the applicant. Thus, even if the sections of the public which are respectively the target of the goods and services covered by each of those marks do not overlap, given that the goods concerned are different, it is possible that a connection between the marks at issue may be established, considering also the high degree of similarity between them.
The dissimilarity between the goods designated respectively by the marks at issue is therefore not a sufficient factor for excluding the existence of a link between those marks, bearing in mind also that the existence of such a link must be assessed globally, that is to say, by taking into account all of the relevant factors of the case.
The case was returned to the EUIPO for re-examination.
INTELLECTUAL PROPERTY PLANET 