Every trademark owner has the right to file an opposition against new applications for identical or similar marks. This, however, requires a correct analysis and strategy because the final result is not always so clear.
The General Court of the European Union has ruled in case T‑510/19, Puma SE v Gemma Group Srl, which concerns some struggles in that regard.
In the dispute at hand, the following European trademark application was filed for class 7 – Machines for processing of wood; machines for processing aluminum; machines for treatment of PVC:
Against this application an opposition was filed by Puma based on two earlier figurative trademarks for classes 18a 25 and 28:
The EUIPO dismissed the opposition because although these signs had some visual similarities their goods were completely dissimilar.
The decision was appealed several times and was turned to the Board of Appeal of the EUIPO by the European court due to some errors.
The Board confirmed the EUIPO position. It found that notwithstanding their obvious differences, the marks had a certain degree of visual similarity and conveyed the same concept of ‘pouncing feline recalling a puma’. It further found that a phonetic comparison of the marks at issue was not possible and that, visually, those marks were far from being identical. The Board of Appeal stated, in essence, that the applicant had not shown that the relevant, and entirely distinct, sections of the public targeted by the goods covered by each of the marks at issue established a link between those marks even though the goods covered by them were different. Next, it found that the applicant had not shown, in essence, that the positive values associated with the earlier marks could be transferred to the mark applied for. In particular, first, the Board of Appeal found that the applicant had not established the reasons why the image of the sports articles covered by the earlier marks positively influenced consumers in their choice of the goods covered by the mark applied for, which bore no relation to the concepts of sports, competition, active lifestyle, youth, pleasure and leisure conveyed by the earlier marks. The Board of Appeal found, secondly, that the applicant had not shown that the use of that mark for very specific industrial goods could devalue the image of the earlier marks.
The decision was appealed again by Puma but this time the Court dismissed it. Although there were arguments whether the reputation of the earlier marks was stated in time and in the official language of the EUIPO, the Court concluded that Puma failed to prove that the image of the earlier marks could be affected by the use of the mark applied for; the Board of Appeal rightly so decided.
Source: Patent- & Rechtsanwaltskanzlei Meyer-Dulheuer MD Legal Patentanwälte PartG mbB