EU trade mark dispute: PUMA’s stripe

On 6 November, the General Court of the European Union ruled in case T-544/23 on a dispute involving PUMA's figurative marks No. 08461469 and No. 012697066.

 

In 2020, Mr Yukai Zheng, a resident of China, applied to the European Union Intellectual Property Office (EUIPO) to register the EU figurative mark No. 018355891. That mark consists of a rounded triangular shape within which a stripe is represented. The mark covers goods in Class 25 of the Nice Classification, such as overalls, shirts, clothing and trousers. However, the German company PUMA SE opposed the application on the basis of its earlier figurative marks No 08461469 and No 012697066, which cover clothing, footwear and headgear in Class 25. Both marks consist of a stripe which is white and black respectively. Those stripes have a flat base, curve upwards to the right, become gradually thinner to form a narrower line and end with a straight line, giving the impression that the stripe has been cut off.

 

Both the Opposition Division and the Board of Appeal of the EUIPO rejected PUMA's opposition, holding that the marks were different and that there was no likelihood of confusion based on Article 8(1)(b) and Article 8(5) of the EUTMR. The Board of Appeal confirmed that the marks were not visually, phonetically or conceptually similar and that one of the conditions for a likelihood of confusion was not fulfilled.

 

The German company appealed against that decision to the General Court of the European Union, which had to decide whether there was a likelihood of confusion between the marks at issue.

 

The General Court upheld the decision of the Board of Appeal. First, the Court pointed out that, although both marks had a curved, ascending stripe in common, the differences in shape and overall appearance were sufficient to avoid confusion. In addition, the Board of Appeal had correctly assessed that the average consumer perceives a mark as a whole and does not analyse its details, which reinforces the conclusion that the overall impression of the marks is different.

 

Regarding Article 8(5), which concerns the protection of well-known marks, PUMA argued that the Board of Appeal did not recognise the reputation of its marks and that the public could establish a link between the marks at issue. However, the Court noted that, according to the case-law, for Article 8(5) to apply, there has to be some similarity, even a weak one, between the marks. Since the Board of Appeal had held that there was no similarity between the marks, the Court concluded that Article 8(5) did not apply in this case. The lack of similarity meant that it was not possible to assess the likelihood of confusion or the link between the marks. Therefore, the General Court dismissed PUMA SE's appeal.