The decision of the General Court of European Union (December 7, 2022, T-623/21, EU:T:2022:776, Puma SE / EUIPO – Vaillant GmbH) has been widely commented by the IP community.

More discreetly, the decision of the EUIPO’s Board of Appeal dated January 30, 2023 (R 2420/2020-1) has not been commented. Nevertheless, the present case is in line with the decision of the General Court since it was also an opportunity to remind some fundamental principles applicable to well-known trademarks.

In this case, LAVOIX had the opportunity to represent the applicant. Indeed, the company “SOCIETE D’EQUIPEMENTS DE BOULANGERIE PATISSERIE” filed an EU trademark application BERTRAND PUMA - La griffe boulangère on April 2, 2019 to designate, among other things, bakery equipment in classes 7, 9 and 11.

The company PUMA SE filed an opposition against this application on the basis of many earlier word and semi-figurative trademarks, registered in particular in classes 9 and 25. The legal ground of the action was based on that the reputation of the earlier trademarks “PUMA” and the violation of Article 8 § 5 EUMR.

In the first instance, the Opposition Division of the EUIPO rejected the opposition, despite the recognition of the “extraordinarily” high reputation of the trademark “PUMA”. The opponent therefore filed an appeal before EUIPO’s Board of Appeal.

The decision of the Board was the occasion for the Office to recall that the application of Article 8 § 5 EUMR presupposes the fulfilment of several cumulative conditions:

  • an earlier registered mark ;
  • an identity of the signs in presence;
  • a very high degree of reputation of the earlier mark in the Member State concerned or in the Union, as the case may be;
  • a use without just cause of the contested mark for undue advantage of the distinctive character or the repute of the earlier mark.

With regard to this last condition, the Office reminds that the relevant public must make a connection between the marks at issue.

In other words, the public must establish a link between the marks, even without confusing them, and it is up to the owner of the earlier mark to prove this in order to be able to escape the scope of the principle of specialty, even in the case of an “exceptionally” high reputation, as it is the case here.

The owners of well-known trademarks must therefore provide a file of evidence relating not only to the reputation of their trademark, but also to the proof of the risk of association between the trademarks at issue with regard to the relevant public, which constitutes a significant amount of prior research work.

This case is currently being appealed before the General Court of European Union, from which we expect an identical position to the one recently held in the decision involving the company with the jumping feline (December 7, 2022, T-623/21, EU:T:2022:776, Puma SE / EUIPO – Vaillant GmbH).

Published On: 26 May 2023Categories: PublicationsTags:

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