How Puma proved a trademark with reputation – a European court decision

europe-1395916_960_720The European Court issued a decision in case C‑564/16 P, EUIPO v PUMA. This case concerns an attempt by an Italian company to register the following EU trademark for Class 7 – ‘Machines for processing of wood; Machines for processing aluminium; Machines for treatment of PVC’:

downloadAgainst this mark an opposition was been filed by Puma on the ground of several earlier trademarks for Classes:

  • Class 18: ‘Leather goods or imitation leather goods included in this class; handbags and other cases that are not adapted to the goods which they are intended to contain, as well as small articles made from leather, particularly purses, pocket wallets and cases for keys; handbags, … ’;
  • Class 25: ‘Clothing, footwear, headgear; parts and components of footwear, soles, insoles and adjustment soles, heels, boot uppers; … ’;
  • Class 28: ‘Games, toys, including miniature footwear and miniature balls (used as toys); apparatus and gear for physical training, gymnastics, and sport included in this class; … ’;

download (1)On top of that, Puma claimed an acquired reputation of its marks on the territory of the EU.

The EUIPO rejected the opposition considering that the goods are not similar and that there is no strong evidence for a reputation of the earlier marks. The reason for this was the fact that Puma claimed its reputation based on older EUIPO decision regarding its trademarks where they were assessed as such with a reputation.

In the following appeal, The General Court stated that the EUIPO was wrong not to take into account the older decisions.

The European court upholds this conclusion stating:

It is also clear from paragraph 30 of the judgment under appeal that, in the three previous decisions, the competent EUIPO bodies had established that one of the earlier marks had been found, ‘on the basis of a large number of items of evidence’, to have a ‘substantial reputation, at least in France’ and that one of them was also considered ‘in the light of the extensive evidence provided,’ to have acquired ‘a substantial reputation through use in the European Union’, enjoying a ‘high degree of distinctiveness as a result of its “long standing and intensive use” and “high degree of recognition”’. The General Court also established that some of those decisions described in great detail the evidence which had led to the conclusion that the earlier marks had a reputation.

In that context, the three previous decisions, in so far as they had recognised the reputation of the earlier marks, were a strong indication, in the opposition proceedings at issue, that those marks could also be regarded as having a reputation for the purposes of Article 8(5) of Regulation No 207/2009, as has already been stated in paragraph 81 above.

Therefore, as has already been held in paragraph 76 above, EUIPO was required to take into account the three previous decisions relied on by Puma and had to provide an explicit statement of its reasoning in the present case in so far as it had decided to depart from the approach adopted in those decisions on the reputation of the earlier marks.


Do you want advanced options for trademark image searching? Here what TMView gives you

pexels-photo-1157858EUIPO reports about the expansion of the TMView database functionality. What’s new is the fact that you can search for trademark images in the national databases of Spain, Bulgaria, Lithuania, and Greece.

This chance gives now the opportunity for image search among 7 million trademarks.

Apart from this, now you can search even for an element of a trademark image which comes as an advanced option.

For more information here.



9 key steps to protect your trademark when selling on Amazon

pexels-photoElizabeth Ward (Virtuoso Legal) published an interesting article for Lexology which discusses the basic steps every trademark owner selling on Amazon has to bear in mind in order to protect it. In brief, the steps are as follow:

1. Get a Robust Trademark;

2. Protect Yourself Where You’re Selling;

3. Logo or Word?

4. Don’t be too Descriptive!

5. Clear the way;

6. Don’t be afraid to spend money;

7. Nip Trouble in the Bud;

8. Stay Vigilant;

9. Don’t Rely on The Police to Sort it Out;

The full article can be found here.


Why searching for earlier trademarks is so important for every business?

pexels-photo-327186Building of a trademark name is a long process which requires a plan for its execution. Part of such a plan is searching for earlier already registered trademarks in Patent Offices databases.

Why this is so important?

Even in the case that you create a distinctive brand name, this doesn’t mean that you will receive successful registration. The reason for this can be the fact that someone else already registered the same or similar name for the same or similar goods as yours. If that’s the case against your application an opposition can be filed and you can be sued as a trademark infringer.

To prevent such negative consequences, it is highly advisable for trademark searches to be done throughout the brand building process.

Having said that, however, it has to be bear in mind that non-specialists in the field of intellectual property can compare and assess mainly trademark identity. When it comes to similarity between the marks and their goods and services things can be much more complicated which requires deep knowledge of the legislation and court practices in the relevant country.

Image: Wokandapix, Pixabay.


A brief guide how you can manage your intellectual property

Albert Ferraloro (Wrays) published in Lexology an interesing and helpful brief guide what steps you can take to start managing your intellectual proerty.

The article covers some essential points in that regard such as:

– Who may create IP?

– When might IP be created?

– What steps can be taken to help identify and capture IP?

– Good business practices.

– Know the ‘IP Landscape’.

– Promoting an ‘IP culture’ in the workplace.

– What are the risks of poor IP management?

– Action items – Trade Marks Considerations.

The full article can be found here.

What decision took the General Court of the EU in case of short trademarks?

pexels-photo-325876.jpegThe General Court of the European Union has ruled in case T‑241/16, El Corte Inglés, SA, e v European Union Intellectual Property Office (EUIPO).

The case concerns an attempt for registration of a Eu trademark EW for the following goods:

– Class 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’;

–  Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery’;

–  Class 25: ‘Clothing, footwear, headgear’.

Against this mark an opposition was been filed based on an earlier European trademark WE for the following goods:

–  Class 3: ‘Soaps, perfumery, essential oils, cosmetics, hair lotions’;

–  Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; umbrellas and parasols; trunks and travelling bags; bags not included in other classes’;

–  Class 25: ‘Clothing, footwear, headgear’.

The EUIPO upheld the opposition concluding that both signs are confusingly similar. The Board of Appeal confirmed this decision too.

The General Court, however, annulled the EUIPO’s decision reminding that in the case at hand both marks are very short signs consisting only of two letters in different order. According to the court in such cases, consumers can make easily a distinction between the marks. What’s more, the signs are dissimilar from a phonetical point of view, and for English speaking consumers they are different from a conceptual perspective too.

Registration of trademarks in The Eurasian Economic Union

700px-Flag_of_the_Eurasian_Economic_Union.svg.pngThe Eurasian Economic Union (EAEU) is an economic union between Russia, Armenia, Belarus, Kazakhstan, and Kyrgyzstan, which resembles the EU in some way.

From that point of view, Liudmila Serova (Gorodissky & Partners) published a very intriguing article for Lexilogy, which discusses how you can register trademarks in EAEU. In brief, there are three main ways in that regard:

  1. To register national trademarks in every separate country – the article gives some interesting details for the trademark legislation in the countries part of EAEU. For example, the well-known status of a trademark in Kazakhstan has to be proved every 10 years after renewing of the mark. The period for non-use of a mark in Russia, Kazakhstan, and Kyrgyzstan is only 3 years.
  2. The second option is to register trademark based on the Madrid system for international registration of marks.
  3. The last option is to register a regional EAEU trademark, which is a new option where you can file one application designating the countries part of the EAEU where you want your trademark to be registered. It’s an easier and cost-effective way.

More information can be found here.