The European Court has ruled in the Case T‑71/20 Puma SE v CAMäleon Produktionsautomatisierung GmbH.
It refers to a dispute related to a European trademark application for PUMA SOLUTION filed by CAMäleon for the following goods and services:
– Class 7: ‘Machine tools for machining and cutting profiles; cross-cut saws and circular saws for wood and light alloys; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); packaging machines; automatic warehouses; robots; machines for treatment of PVC; power screwdriver; painting machines; machines for the production of door and window frames; machines for assembling shuttering components; machines for processing aluminium, plastic and steel profiles, in particular for the window, door and facade industry; table and mitre saws; double mitre saws; automatic saws; wedge-cutting and V-cutting saws; milling machines; copy milling cutters; end milling cutters and automatic notching machines; water slot milling cutters; corner crimping machines; rod machining centres; welding machines; roughcasting machines; welding and cleaning lines; bending machines, including bending furnaces and bending installations; screw systems for reinforcing profiles; drilling machines, drilling rigs; punching; stops for machines for processing aluminium, plastic and steel profiles; assembly stands and assembly tables; rotary tables; saw fences for use on table saws; metalworking machine tools’;
– Class 9: ‘Computer hardware; computer software; computer hardware and software for the management of door and window frame production cycles and installations; magnetic and optical data carriers; computer programmes [programs], recorded; computers; computer peripheral devices; computer hardware and software for automation purposes; computer hardware and software for the management of machine tools; warehouse management systems; management systems for door and window frame production installations; communications systems for data relating to the production, assembly, storage, delivery of door and window frames; automatic handling systems for door and window frame production installations; cell phones; portable computers; printers for computers; programs for personal computers, mobile telephones and handheld computers; heatdetectors; level indicators; headphones; headsets; cables for personal computers, mobile telephones and palmtop computers; bar code readers; measuring instruments; programs for computers; computer-aided design (CAD) software; software for estimating, selling, designing and producing shuttering and curtain walls; software for programming and managing machine tools; software for checking (supervision) of industrial production and automation; computer programs for estimating, selling, designing and producing shuttering and curtain walls; computer programs for programming and managing machine tools; computer programs for checking (supervision) of industrial production and automation; software for the management of door and window frame production cycles and installations; computer programs for managing shuttering production cycles and installations; computers; peripherals adapted for use with computers; magnetic and optical data carriers; data-processing equipment and computers’;
– Class 16: ‘Catalogues relating to computer software; computer software operating manuals; instruction manuals; instruction manuals for personal computers, mobile telephones and palmtop computers; instruction manuals for the certification of door and window frames; printed forms; printed matter for promoting and selling software for designing, producing and/or selling doors, windows and partitions; printed matter for promoting and selling software for managing machine tools and checking (supervision) of industrial production and automation; books; user manuals (handbooks) for computer programs for designing, producing and/or selling doors, windows and partitions; user manuals (handbooks) for computer programs for managing machine tools and checking (supervision) of industrial production and automation’;
– Class 42: ‘Updating and maintenance of computer software and programs; configuring computer hardware using software; configuration of computer networks by software; configuration of computer software; computer hardware and software consultancy; creation, maintenance and adaptation of software; installation, maintenance, updating and upgrading of computer software; computer systems integration services; rental of computer hardware and computer software; design, development and implementation of software; computer software research; computer software technical support services; technical project studies in the field of computer hardware and software; development of computer programs recorded on data media (software) designed for use in construction and automated manufacturing (CAD/CAM); development of computer software for computer aided design/computer aided manufacturing [CAD/CAM]; upgrading of computer software; development and testing of computing methods, algorithms and software; computer programming; testing, analysis and evaluation of the goods and services of others for certification purposes; computer programming in relation to applications for designing, producing and/or selling doors, windows and partitions; computer programming in relation to applications for managing machine tools and checking (supervision) of industrial production and automation; creating programmes for data processing.’
Against this application an opposition was filed by the well-known sportswear producer Puma based on really registered trademarks for PUMA in classes 18, 25, 28.
On top of that, Puma claimed a trademark with reputation on the territory of the EU.
The EUIPO found both marks similar and the fact the earlier mark has a reputation. However the Office concluded that there was no possibility for a consumer confusion because the goods in both signs were completely dissimilar with a few exceptions in class 9. So the Office dismissed the opposition for almost all goods and services.
With regard to the reputation, according the EU law, a trademark with a reputation is able to stop later marks even for dissimilar goods or services in case these three cumulative conditions are met:
- both marks must be identical or similar,
- the earlier mark must have a reputation, and
- that there must be a likelihood that the use of the later mark will take unfair advantage of the distinctive character or the earlier mark’s reputation.
According to the EUIPO, the third requirement was not fulfilled because the target audiences of both signs were so different.
This decision was appealed by Puma.
According to the General Court of the European Union, a presence of reputation is not enough to affirm the existence of a link between two trademarks.
On the other hand, the Court found an error in the EUIPO decision. The Office done an incomplete examination of the goods and services covered by the mark applied for focusing only on fact that the goods are used by industry professionals. According to the Court, some of the goods and services can be used by the general public too. From that point of view, the target audiences of both sign can overlap to some extent. For the rest of the goods and services, however, there was no evidence that the later mark would take unfair advantages from the reputation of the earlier one.
Taking into account all of this, the Court upheld partially the Puma’s appeal and confirmed the opposition for the following goods and services:
- Class 7: ‘power screwdriver’;
- Class 9: ‘computer hardware’, ‘computers’, ‘data-processing equipment and computers’, ‘computer peripheral devices’, ‘peripherals adapted for use with computers’, ‘magnetic and optical data carriers’, ‘printers for computers’, ‘heatdetectors’ and ‘measuring instruments’;
- Class 16: ‘catalogues relating to computer software’, ‘computer software operating manuals’, ‘instruction manuals’, ‘instruction manuals for personal computers, mobile telephones and palmtop computers’ and ‘books’;
- Class 42: ‘updating and maintenance of computer software and programs’, ‘configuring computer hardware using software’, ‘configuration of computer networks by software’, ‘configuration of computer software’, ‘computer hardware and software consultancy’ and ‘computer software technical support services’;
INTELLECTUAL PROPERTY PLANET 