(Judgment of 26 September 2018 in Case T-62/16 – Puma SE v. EUIPO / Doosan Machine Tools Co. Ltd)

In a case concerning completely dissimilar goods and different public, the General Court (GC) once again confirmed that the strength of brand’s reputation is one of the key factors to be taken into account both when assessing a link between the signs as well as whether there is a risk of unfair advantage or dilution for the purposes of Article 8(5) EUTMR. Assuming the existence of reputation, without assessing its strength and examining the actual evidence, is not enough.

Background

Doosan sought to register the sign PUMA (fig.) in relation to very specific goods in in class 7 (lathes, machining and turning centres and electric discharge machines). Due to the near-identical signs, Puma – the German shoe and sportswear company – filed an opposition based on its earlier PUMA marks. Puma’s opposition was rejected by the Board of Appeal (Board) due to the dissimilarity of the goods and due to the absence of any link. Although the signs were considered to be highly similar, the goods were so different and directed at entirely different public that, according to the Board, no link exists.

The GC annulled the Board’s decision stating that the Board erred twice in its assessment of a link between the signs. First, it carried out its assessment without assessing Puma’s evidence of reputation. Instead it assumed that Puma’s marks were ‘highly reputed’ when ‘exceptional reputation’ going beyond the relevant public of Puma’s goods and extending to the public at large was claimed. Second, the Board mistakenly considered Puma’s marks to have a weak inherent distinctive character (allegedly on the basis that the qualities of ‘strength and power’ associated with pumas allude to characteristics of all kinds of goods).

The GC confirmed that the existence of a link is an essential pre-condition for the application of Article 8(5) EUTMR. It further confirmed that reputation is inextricably connected to a link and that the existence of a link cannot be properly assessed without actually evaluating the strength of the claimed reputation. Therefore, the case was sent back to the Board for re-examination of:

• the existence of Puma’s reputation and its strength, the degree of distinctiveness of Puma’s marks and the resulting link between the signs,
• and, if applicable, for examination whether any of the injuries referred to in Article 8(5) EUTMR would occur.

In this context, the GC reminded the Board that in case of marks with exceptionally high reputation, the risk of unfair advantage or detriment may be so obvious that no evidence to this effect may be required.

Conclusion

Overall, without anticipating the final outcome, this case is a useful reminder that the EUIPO should always assess the opponent’s evidence of reputation and confirm the strength of the claimed reputation in the context of Article 8(5) EUTMR. This case is also a reminder that there is a difference between normally, highly and exceptionally reputed marks. This distinction may turn decisive both for the existence of a link and for showing there is a risk of unfair advantage. Strategically, we therefore recommend to well-known brand owners that they always claim exceptional reputation for their core brands.

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