EU General Court rules on PUMA trade mark dispute

In a recent judgment of 28 February 2024 (T-184/23), the General Court of the European Union dealt with a trademark dispute involving the well-known brand PUMA against the trade mark BERTRAND PUMA La griffe boulangère.

The case involves Puma SE, the worldwide recognised German fashion company, and a French bakery and confectionery equipment company. The contested mark, was a figurative mark consisting of a feline jumping over the name “BERTRAND PUMA La griffe boulangère”, covering goods and services relating to machinery for the bakery industry, within Classes 7, 9 and 11 of the Nice Classification.

The German fashion company opposed the registration on the basis of its iconic logo, protected through its EU figurative mark No 12579694, registered for goods in Class 25, including clothing, footwear and headgear. It claimed that since its mark was particularly well known, it should benefit from the enhanced protection afforded to marks with a reputation under EU Trade mark Regulation Article 8(5) and that Bertrand Puma’s trade mark application should be refused due to the similarity between the signs, even though there was no overlap in the goods and services covered by the two marks.

The EUIPO Board of Appeal upheld the Opposition Division's decision in rejecting PUMA’s opposition because, despite the reputation of the earlier PUMA mark and the existence of some similarity between the two signs there was no risk of confusion or consumers linking the two companies due to the differences in the goods and markets covered by the two trade marks. The German company then appealed to the General Court, alleging errors in the assessment of the similarity of the marks and the possibility of unfair exploitation of the distinctive character of the earlier PUMA trade mark.

The General Court had to determine whether there was a likelihood of confusion between, or establishing a link between the “Bertrand Puma” trade mark and the previous "PUMA" mark of the renowned fashion company, in particular given the differences in the goods and services covered.

The General Court upheld the decision of the EUIPO and dismissed PUMA's appeal.

The Court held that, although PUMA was a well-known brand for sportswear, footwear and headgear aimed at the general public, the goods covered by the Bertrand Puma mark were aimed primarily at professionals in the bakery sector. That difference in markets and target groups was decisive in establishing the lack of connection between the marks at issue.