An Instagram post of Rihanna has caused trouble for Puma shoe design in the EU

The Board of Appeal of the EUIPO has ruled in one interesting case related to Community designs and why their protection should be considered in great detail.

The case concerns the RCD application filed in 2016 by PUMA for the following design of shoes:

Several years later, an invalidation proceeding was initiated against this design on the grounds of lack of novelty and individual character. For evidence, an Instagram post was submitted where the well-known signer Rihanna was pictured wearing quite similar shoes. The post was dated 2014.

According to the EU legislation, one design is protectable only if it is new and original. Novelty means that there has to be no public information for the design 12 months before the application is filed with the Patent Office.

In the case at hand, The Board found that Rihanna’s post on Instagram, having more than 300 000 likes and additional media coverage, was solid proof that the shoes design was public way before its application with the EUIPO.

Furthermore, the BoA points out that the designs under comparison create similar overall impressions
on account of the same shape and form of the shoe, consisting of an upper part with a number of lines
and holes placed and arranged the same way, as well as the same shape and form of the thick, vertically-striped sole. Thus, the contested design lacks individual character.

The case comes to show us how important is timing in the case of design protection. In such situations, there are two main options, the owner to file an application sooner or the marketing activities to be postponed.

Advertisement

Puma won a dispute over figurative trademarks in Japan

Masaki MIKAMI reports about a dispute over figurative trademarks in Japan. The case at hand concerns a trademark application for the following figurative mark applied for class 25:

Against this sign an opposition was filed by the German sportswear manufacturer PUMA on the ground of the following early famous sign in class 25 too:

Puma has been using this sign for most of its sports shoes since 1958. The company submitted evidence for the available reputation of its mark in Japan, amongst other annual sales of 15 billion yen and 4% market share.

The Patent Office agreed that the earlier sign has a strong reputation in the market. In the assessment of the signs, the Office concluded significant similarities to the extent that the new sign can be perceived as a reversed version of the earlier sign.

Taking into account the identity and similarity between the goods in both marks, the Office considered both marks as similar enough to create consumer confusion about the source of trade origin.

FIFA won a trademark dispute against PUMA regarding the upcoming World Football Cup in Qatar

The Swiss Federal Supreme Court has ruled on a trademark dispute between FIFA and the German sportswear producer PUMA.

The case concerns the following Swiss trademarks registered by the Puma for classes 18, 25, and 28: “PUMA WORLD CUP QATAR 2022” и “PUMA WORLD CUP 2022”.

FIFA as an organizer of the World Football Cup wasn’t impressed by these registrations and attacked them in an attempt to cancelation. The ground for this, however, wasn’t FIFA’s early registered marks for WORLD CUP QATAR 2022 and WORLD CUP 2022 but the misleading nature of the later marks. According to the World Football Federation, reading the marks, consumers can conclude that Puma is the title sponsor of the event which was not the case.

The Court agreed and upheld these arguments. The parts WORLD CUP QATAR 2022 and WORLD CUP 2022 have a direct and clear message that is associated with the World Football Cup because of which such misleading result is possible.

At the same time, the Court upheld PUMA’s counterclaims that FIFA’s earlier marks were descriptive and not distinctive, however, leaving the door open for proving acquired secondary distinctiveness.

Source: Kluwer Trademark Blog

Puma won a trademark dispute in China

Puma won a trademark dispute in China. The case at hand concerns the following registered trademark by Ningbo Spark Motor Co., Ltd. in 2005 for class 7 – mechanical engines, gasoline and diesel generator sets, water pumps, washing machines, construction machinery, agricultural machinery, etc.:

The Chinese characters “彪马” (BIAO MA) within the mark mean Puma in translation.

Puma initiated an invalidation proceeding against this mark based on early registered trademarks Puma for class 25 clothes, shoes etc.

The Patent Office dismissed the invalidation finding both marks dissimilar for completely different goods and target consumers.

In the appeal, the Court upheld this conclusion stating that there is no possibility for a consumer confusion even though the submitted evidence that Puma is a well-known trademark.

A new appeal followed and this time the Beijing Hight Court overturned the court of first instance decision. According to the Court in the case at hand the registered later mark was against article 13.3 of the China Trademark Law or the so-called “well-known mark dilution”. This means that the later mark takes advantages from the reputation of the earlier mark even for dissimilar goods weaken its distinctive quality.

This decision is interesting and contrast significantly with the General Court of the EU recent decision where Puma lost the case against figurative mark for class 7.

Source: CCPIT Patent & Trademark Law Office – Ling Zhao and Lan Zhou за Lexology.

Puma lost a trademark opposition against a cougar

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

Puma prevailed over Ruma in a trademark dispute

Puma won one interesting trademark opposition in Finland. The case concerns a trademark application for RUMA in classes 25 and 28 (clothes and toys among others).

Against this application an opposition was filed by Puma based on early registered trademark for PUMA in the same classes.

The Finish Patent and Registration Office dismissed the opposition considering the two marks as not confusingly similar. The reasons were the different first leters and the conceptual dissimilarity.

The decision was appealed. The Court upheld it after which the decision was applied again.

The Supreme Administrative Court overturned the decision finding both marks visually similar despite the first letters that are different. According to the Court  the letters P and R are similar in appearance.

The Court questioned whether consumers would understand directly the meaning of PUMA as a word. Even if this was the case PUMA was distinctive for all the goods in classes 25 and 28. What’s more because of its reputation it has even stronger distinctive character. The interesting part here was the fact that the Court concluded on the existence of PUMA’s trademark reputation without submitted evidence in the proceeding.

According to the Court, when it comes to clothes they are often sold in stores where consumers choose between them mostly based on their visual aspects and not so based on conceptual or phonetic characteristics.

Taking all of this, the Court considered that both marks are similar enough.

Source: Johanna Säteri, Jenni Ihalainen – Berggren Oy. 

Puma lost a dispute against Nike for the FOOTWARE trademark in the UK

Puma lost an opposition against trademark FOOTWARE for classes 9, 38, 42, filed by Nike in the United Kingdom.

According to Puma this sign is obvious misspelling of the word FOOTWEAR which has particular meaning related to shoes.

From that perspective the mark applied for is not distinctive and it is descriptive even for the specified goods and services because it can be perceived, for example, as a software used in relation to footwear.

Nike response was that the sign was distinctive enough. The WARE part has been already registered as a separate trademark for the same classes. On top of that Puma themselves owns a trademark SPORTSWEAR.

The UK Patent Office dismissed the opposition stating that there were no sufficient evidence that the word FOOTWARE can be understood in a descriptive way for the specified goods and services.

What’s more, the way how it is spelled requires additional considerations from the consumers in order they to get the meaning of the word Footwear.

This case is an example about the so-called suggestive trademarks which meaning is not direct but requires additional intellectual efforts from the consumers to be determined. In some cases these marks can receive protection.

Source: Charlotte Wilding – Kemp Little LLP за Lexology.