Puma fails to prove links: the limits of famous trade marks

There aren’t many people who don’t know Puma and their trade mark PUMA as well as the famous jumping feline trade mark on sneakers and sports clothing.

Although the PUMA trade mark and the jumping feline are famous trade marks successfully used for many years in the market and are recognized by consumers as being a product from the Puma company, there are limits to the protection of a famous trade mark in the EU as the following cases show.

1. PUMA (fig.) / PUMA (fig.) 21/12/2022, T‑4/22

Puma opposed an application for a stylisation of the word PUMA covering lathes and related machine tools, relying on the reputation their PUMA mark enjoyed in the European Union.  The opposition was refused and Puma’s appeal to the Board of Appeal’s (BoA) was also unsuccessful. The BoA did not find any link between the marks at issue. It noted that the professional public of the goods applied for is part of the population in general, but it does not follow that it also forms part, on that ground alone, of the public for which the opponent’s goods are intended (clothing and shoes in Class 25), even if the professional public is aware of the earlier mark.

Puma appealed to the General Court (GC) but they confirmed the BoA’s decision.  The GC found that although the signs at issue are almost identical, the distinctive character of the earlier mark high, and its reputation goes beyond the relevant public for the goods covered, this does not necessarily mean that there is a link between the marks at issue. Such a link has to be assessed in the light of the relationship between all of the relevant factors in the case. The goods applied for are machine tools in Class 7 which belong to a specific sector that is entirely different from the sector to which the opponent’s goods belong (clothing and shoes). In addition, the applied for goods are aimed at a specific public, radically different from that of the opponent’s goods, and the applicant failed to demonstrate that the earlier mark would be brought to mind by the consumer of the contested goods; there is therefore no link between the marks.

2. BERTRAND PUMA La griffe boulangère (fig.) / PUMA (fig.) 28/02/2024, T‑184/23

Puma were also unsuccessful in attempting to enforce their rights in their feline character to the industrial bakery sector.

In this case, Puma challenged an application to register the above mark, which included both the word puma and a figurative element of a leaping feline, this time for various goods for use in the foodstuffs sector, principally goods for bakers.  The Opposition was partially successful but the same rationale applied in respect of the highly specialised goods for which protection was sought.

Puma’s appeal to the Board of Appeal (BOA) also failed so Puma went to the General Court (GC) again.  The GC affirmed that there is no link between the applied for goods such as machine tools and apparatus for industrial bakeries and the earlier figurative mark ‘PUMA’, which had an established reputation for sports apparel, footwear, and headgear.

The GC highlighted that the mere fact that the earlier mark has a high degree of reputation for certain specific categories of goods or services does not necessarily imply that there is a link between the marks at issue. There is no provision in the relevant legislation that provides for any presumption with regard to trade marks that have an exceptional reputation, nor has the EU legislature made these subject to special treatment.

The GC emphasised that a link cannot be presumed merely because the earlier mark has an exceptional reputation and referred to the Court of Justice ‘Intel’ judgment 27/11/2008, C-252/07, Intel. That judgment stated that, even if there is an overlap of the relevant public, the goods and services at issue may be so dissimilar that the contested mark will be unlikely to bring the earlier mark to the minds of the relevant public.

In the light of the extremely dissimilar nature of the goods at issue and the radically different markets, the GC noted that the possibility of collaboration with the earlier mark, as alleged by the opponent, seemed very unlikely and was not supported by any evidence. It concluded that no connection would be made between the marks, notwithstanding the earlier mark’s high reputation and the average similarity between the signs.

This leads to the conclusion that, whilst famous trade marks enjoy a scope of protection that reaches beyond the goods and services they are registered for, there are limits to this protection when a commercial link cannot be made between the goods and services in question. In these cases, given the lack of a link, the consumer will not assume that the marks are from the same company, even if the signs are almost identical.