In 2020, the famous sports brand Puma SE opposed an EU trade mark application by Puma Srl for the stylised puma soundproofing mark in respect of class 10 (Diagnostic, examination, and monitoring equipment, namely equipment comprising soundproof cabins for audiometric tests performed by medical personnel; Sound excluding instruments for medical use, particularly soundproof booths) and class 17 (Acoustic screens for insulation; Bark coverings for sound insulation; Soundproofing materials; Quilted wadding articles for insulation; Acoustic insulation articles and materials; Insulation and barrier articles and materials; Insulation sheets; all the aforesaid goods intended for professional construction of silent cabins and soundproofing booths for medical use).

Puma SE based its opposition on the EUTM registration for its stylised PUMA mark covering class 25 (apparel, footwear, headgear) and claimed Article 8(5) (reputation/unfair advantage).

The Opposition Division found the opposition succeeded against the class 10 goods but not those in class 17. Puma SE appealed and Puma Srl cross-appealed. The Board of Appeal (BoA) rejected the Opponent’s appeal and upheld the Applicant’s cross-appeal.

This decision is of interest as it reminds us that while EU trade mark law gives an increased scope of protection to brands with a reputation, there are limits to that scope. This case is an illustration of the limits on the distance between the goods applied for and those for which the brand is reputed. Here, despite the clearly very similar marks, the accepted fame of the earlier mark and the fact that similarity of goods is not necessary, it was the “enormous dissimilarity of the goods and markets” that precluded the existence of the necessary link needed to apply Article 8(5) of the EU Trade Mark Regulation (EUTMR).

Geoff Weller unpacks the case in an article for CITMA. You can read the full text here.