OPPOSITION No B 2 728 106

Puma Se, Puma Way 1, 91074 Herzogenaurach, Germany (opponent), represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º dcha., 28001 Madrid, Spain (professional representative)

a g a i n s t

Vangot International Technology Limited, Rooms 05-15,13A/F,South Tower, World Finance Centre, Harbour City, 17 Canton Road, Hong Kong Special Administrative Region of the People's Republic of China   (applicant), represented by José Izquierdo Faces, Iparraguirre, 42 – 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).

On 02/11/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 728 106 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 277 106 for the figurative mark ‘’. The opposition is based on international trade mark registration No 1 005 123 designating the European Union, for the figurative mark ‘’ and European Union trade mark registration No 12 579 728 for the figurative mark ‘ ’. The opponent invoked Article 8(1)(b) EUTMR in relation to both signs and Article 8(5) EUTMR in relation to European Union trade mark registration No 12 579 728.

REPUTATION — ARTICLE 8(5) EUTMR

In relation to Article 8(5) EUTMR, the opponent invoked European Union trade mark registration No 12 579 728 for the figurative mark ‘’ for which the opponent claimed repute in the European Union in relation to all the goods covered by this earlier mark.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08 & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41).

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 04/06/2015 for the following goods:

Class 9:         Cellular phones; Universal Serial Bus [USB] drives; batteries, electric; video surveillance cameras; closed circuit television cameras; radar apparatus; navigational instruments; electronic navigational and positioning apparatus and instruments; car navigation computers; headphones; anti-theft warning apparatus; remote control transmitters; monitors [computer programs]; computer peripheral devices; couplers [data processing equipment]; wearable activity trackers; cases for smartphones; cabinets for loudspeakers; protective cases for smartphones; car video recorders.

Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to the abovementioned filing date of the contested application. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 18:  Leather and imitations of leather, and goods made of these materials, namely briefcases, bags, bags for clothing, holdalls, weekend bags, multipurpose bags, all-purpose athletic bags, all-purpose sports bags, work bags, attaché cases, shopping bags, two-wheeled shopping bags, souvenir bags, bags (envelopes, pouches), for packaging, tote bags, handbags, small clutch purses, sling bags, gladstone bags, ladies' handbags, gentlemen's handbags, bags for men, hip bags, evening handbags, evening bags, beach bags, bags for sports, courier bags, changing bags, tool bags, bags for campers, belt bags and hip bags, pouches, gym bags, shoe bags, satchels, school book bags, school bags, shoulder belts and straps, shoulder bags, haversacks, camping bags, boston bags, casual bags, sling bags for carrying infants, diplomatic bags, document cases, folders, document wallets, boxes, luggage, travel luggage, trunks for travel purposes, baggage, flight bags, trunks and travelling bags, travel bags, flight bags, wheeled shopping bags, travelling handbags, vanity cases, not fitted, garment carriers, suit carriers, travel garment covers, duffel bags, rucksacks, bags for climbers, bags for campers, nappy bags; bags and pouches, included in Class 18, and small goods of leather, namely luggage tags, luggage label holders, bags for men, baggage, coin purses, coin purses, pocket wallets, wallets, coin purses, card holders, card holders, briefcases, credit-card holders, credit-card holders, credit-card holders, business card cases, driving licence cases, key bags, key bags, fanny packs, clutch bags, small pouches, toiletry bags, cosmetic purses, cosmetic purses, make-up bags, cosmetic purses, cosmetic purses, cosmetic purses, tie cases, laces; wallets, pocket wallets, key cases, handbags, briefcases, shopping bags, satchels, carrier bags, travelling bags, sports bags, included in Class 18, duffel bags, rucksacks, school bags, belt bags, toiletry bags, trunks and travelling bags; umbrellas, parasols and walking stick.

Class 25:        Apparel, footwear, headgear.

Class 28:         Games and playthings, gymnastic and sporting equipment, gymnastic and sporting articles (included in Class 28); skiing and tennis equipment; skis, ski bindings, ski poles, edges for skis, climbing skins for skis; balls, including balls for sports and balls for games, golf balls, tennis balls; dumb-bells, shot puts, discus, javelins, clubs for gymnastics, sport hoops; shin pads, knee, elbow and ankle guards for sports purposes; sports gloves, included in Class 28; tennis rackets, cricket bats, golf clubs, hockey sticks; table tennis rackets, badminton rackets and squash rackets and parts therefor, in particular grips, strings, grip and lead tape; bags for sports equipment, specially designed for the objects to be carried therein; specially adapted bags and sleeves for tennis rackets, table tennis rackets, badminton rackets, squash rackets, cricket bats, golf clubs and hockey sticks; roller skates and ice skates, inline skates, table tennis tables and nets; nets for sports, goal and ball nets; start and finish banners, tapes and awnings for sports events, sight screens for tennis courts, umpires' stools for tennis events.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

List of evidence

On 05/04/2017, the opponent submitted a set of evidence aimed at demonstrating, inter alia, the repute of European Union trade mark registration No 12 579 728

‘’.

• Annex 4: a printout from the website www.puma.com with general corporate information about the company PUMA SE as a sportlifestyle company that designs and develops footwear, apparel and accessories, and its trade marks, among them, the earlier marks. The first three pages are dated 11/03/2011. The rest of pages are undated and include the sign ‘’.
• Annex 5: a report with information on part of the history of the company PUMA SE, from 1924 until 2010. Reference is made to some PUMA products, such as football boots, running shoes, contact lens (for marketing purposes), sleeve less tennis dresses and shirts, tennis racquets, tennis equipment, shoes, football jerseys, t-shirts and shorts and the role of the company as sponsor in various sport competitions as for example sailing races. The date of the printout is 8/03/2011.
• Annex 6: a copy of a news article in German, entitled “60 Jahre 1948-2008”, dated 24/10/2008, which includes a summary of 60 years of history of the PUMA Company, including its trade marks ‘’ and ‘’, among others, mainly in connection with the PUMA football boots.
• Annex 7: a power point presentation with 17 slides with information about the Puma Motorsport History. This document shows Puma’s relationship with the world of motorsport and includes a list of the sponsored teams between 1998 to 2016 and the estimates for the year 2016. The sign ‘’ appears in each slide and in the photos of the team wearing PUMA sportswear. The same sign appears in the photos of the vehicles as its sponsor sign.
• Annex 8: a document of 192 pages entitled ‘Annual Report 2013’, dated 12/02/2014, with the financial position and results of the company PUMA in relation to footwear, apparel and accessories products and its sport sponsorship programme. This assessment has been performed by DELOITTE & TOUCHE GMBH AUDITING COMPANY. In the global picture of the Group’s situation it is shown, that the results achieved by the company in 2013 were of three billion Euros with more than 40% coming from EEMEA (Europe, Eastern Europe, the Middle East and Africa (EEMEA). Imagines of sport shoes, winter jackets, football t-shirts and boots, all-purpose athletic bags, sport bags, gym bags, bags for sports, golf sticks, rucksacks, belt bags and hip bags, watches; football balls, golf and tennis apparel, footwear and headgear, shin pads, knee, elbow and ankle guards for sports purposes, belts, caps, kids sportswear appear in the document, as well as pictures with men and women wearing sport equipment with the marks ‘’ or ‘’ in different colours.
• Annex 9: an undated affidavit, signed by Mr. Lämmerman, Managing Director of PUMA SE, showing the sales of footwear, apparel and headgear in France, Germany, Austria, Switzerland, Italy, United Kingdom, Benelux, Denmark, Finland, Sweden, Norway, Spain, Portugal, Lithuania, Czech Republic, Slovakia, Poland, Hungary, Estonia, Latvia, Cyprus and Greece, from 2008 until 2013:

 

• Annex 10: several undated affidavits, signed by Mr. Lämmerman, Managing Director of PUMA SE, showing the sales of footwear labelled with both marks ‘’ and ‘’ in United Kingdom, Sweden, Italy, German, Finland and Denmark, Benelux and Spain during the period 2008-2013.  According to the document in these countries the total amount of units sold is 73.08 million and the net sales in € are 1,522.3 million.
• Annex 11: a copy of an undated document without any signature, with the following sales figures for the years 2014 and 2015 for footwear in different countries of the European Union  that amounted to:

The global net sales for France, Germany, Austria, Switzerland, Italy, United Kingdom, Benelux, Denmark, Finland, Sweden, Norway, Spain, Portugal, Czech Republic, Poland, Estonia, Latvia amounted to:

• Annex 12: ten copies of ‘Sporting Goods Intelligence International Branded Athletic Footwear Market’ and ‘SGI EUROPE Sporting Goods Intelligence’ publications, covering the period 2004-2014, with business information and news on the sport sector mentioning the sign ‘PUMA’ in Spain and other European countries. ‘PUMA’ appears in a ranking on a worldwide level in relation to the footwear market occupying the third position (estimates are shown in millions of US $). One of these documents specifies that Puma comprises a growing proportion of sales through its own stores, inflating its turnover and its estimated market shares.
• Annex 13: a report in French with a translation into English from a public survey carried out in France in 2008 on the basis of a sample of 400 respondents. The report rates the spontaneous notoriety of the Jumping Cat mark at 97% (96% among men, and 98% among women) in the sportswear market.
• Annex 14: several printouts with statistics and news from different external sources in relation to PUMA:

• Annex 14.1: an extract dated 19/05/2015, from The Statistics Portal about Revenue from footwear segment of Nike, Adidas and Puma from 2010 to 2013 (in billion U.S. dollars).
• Annex 14.2: an extract dated 19/05/2015, from The Statistics Portal about Puma products purchased in the UK in 2013. During this year 1.38 million people used in UK Puma sports shoes and trainers, 1.269 million people used Puma’s clothing and 339.000 used Puma’s accessories.
• Annex 14.3: a copy of a document entitled ‘Verbraucher schätzen Qualität und Marke’ (Consumers appreciate quality and trade mark) with a chart that shows the MARKENBEKANNTHEIT – Anteil der Befragten, die die Marken kennen (BRAND AWARENESS – Percentage of interviewees who know the marks). The percentage of awareness of the trade mark ‘PUMA’ amounts to 99% of the interviewees in Germany during the year 2013.  
• Annex 14.4: an extract from the Sports Business Daily Journal, published on 22/11/2009, with the article ‘Nike, Adidas, Puma, among Interbrand’s Best Global Brands’ in ‘09. PUMA appears in 97th position within the top 100 brands.
• Annex 14.5: a PUMA Case Study dated 12/05/2015, drawn up by the independent company D&AD. This study shows the history of the company together with the brand development and its business growth from 1993 to 2011. The document includes the following paragraph on page 19:   “By some measures, the brand has achieved a great deal. According to research by TNS published in 2009, PUMA now has a six percent market share of the UK sportswear market, behind Nike, Adidas, Reebok and Umbro. Surveys of US college students in 2010 ranked PUMA as the number seven sports-shoe brand of choice for females, and the number eight for males, aged 18-24 (e-marketer.com).” References about a PUMA phone appear only as a project.
• Annex 14.6: an extract from the book Sports in the Competition of Metropolitan Regions – on page 35, Gerhard Trosien – 2012, showing the following statement on the biggest sporting goods corporations in Germany and in Europe: ‘But it seems that there are possibilities to find approaches to transfer some findings on sports economics. From one metropolitan … The reason for this is that the two biggest sporting goods corporations in Germany and in Europe are located there (Adidas, no. 2 and Puma, no. 3 world-wide also).’
• Annex 14.7: an extract from the book Sport Brands – Page 152, written by Patrick Bouchet,  Dieter Hillairet,  Guillaume Bodet – 2013, with the following assertions: ‘While this reinforcement may have only concerned the French market, it represented a quarter of the brand's turnover worldwide. The German brand Puma faced the same kind of aging situation. (…) Puma chose the opposite strategy and targeted upper segments. The brand commercialised a trendy urban collection inspired by its models designed for sport competition. Available in many colours, these models were very quickly successful. (…) Puma passed its rejuvenating challenge and has become one of the younger generations’ favourite brands…’.
• Annex 14.8: a copy of the article “MOST EXCITING BRANDS 2015…", from the web: http://retail.econoictimes.idiatimes.com, where it is possible to read the following tex: “The relatively humble and unprepossessing Woodland has trumped formidable competitors like Nike, Adidas and Puma to dominate the Sport and Footwear category in the Most Exciting Brands 2015 survey.”
• Annex 14.9: a printout from the website Statista – The Statistics Portal under the title “Sporting goods brands ranked by brand awareness* amongst US males in 2014 in which PUMA is ranked as number four.

 

• Annex 15: contains several folders with different material, such as: pictures of different PUMA campaigns, such as ‘LOVE EQUALS FOOTBALL AT FOOTBALL.COM (2010)’, developed in Africa, using the logo ‘’; pictures showing well-known football players wearing sportswear with the logo ‘’ in different colours and sponsoring different models of PUMA sport shoes; the Creative Guide Social SS 12 with general information about fonts/logos/colours… ‘’ and several photos saved in folders dated 2011-2012 of different shops selling PUMA sport shoes; a dossier with marketing expenses including details of the different campaigns of PUMA in the European Union, and their corresponding costs covering the period 2006 – 2011 and pictures with  the Puma logo ‘’.
• Annex 16: clippings showing both earlier trade marks. These clippings are taken from magazines and newspapers published across the European Union, such as FHM (Germany), Glamour, Gioia (Italy), GQ (Portugal), FHM (Romania), Financial Times (United Kingdom), Max (France) or Tiempo (Spain) in their corresponding languages, covering the period 2006-2012 and showing pictures of items with the signs ‘Puma’ and  ‘’ or including only the springing cat logo without the word element ‘PUMA’ as appear for example in the following product  in relation to fragrances, glasses, t-shirts, sport shoes, jackets, belts, backpacks, dresses, watches, shops, etc.
• Annex 17: photos and clippings saved in folders dated 2006-2011, about celebrities in the sports world who use footwear and clothing with PUMA’s marks, ‘’, ‘’ and ‘’ not only in Europe, but all over the world. There is also a document listing all the sportsmen and teams sponsored by PUMA, including star footballers such as Cesc Fabregas, Gianluigi Buffon or Radamel Falcao; national football teams, such as Italy, Austria, South Africa or Uruguay; and Formula 1 drivers such as Fernando Alonso or Michael Schumacher.  

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in the European Union for some goods in Class 18, namely: all-purpose athletic bags, all-purpose sports bags; bags for sports, belt bags and hip bags, gym bags, rucksacks; apparel, footwear, headgear in Class 25 and gymnastic and sporting equipment, tennis equipment, football balls, shin pads, knee, elbow and ankle guards for sports, sports gloves, tennis rackets, golf sticks, included in Class 28.

It is clear from the evidence that the earlier trade mark has been subject to longstanding and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. The sales figures and market share shown by the evidence and the opinion polls, together with the marketing details, sponsorship campaigns, news, articles and reports, submitted by the opponent in relation to the signs ‘’ ‘’ and the PUMA logo ‘’ (in different colours), all together unequivocally show that the mark, ‘’ enjoys reputation among the relevant public.

2. The signs

Earlier trade mark	Contested sign

The earlier mark is figurative mark comprised of the word element ‘PUMA’ in a bold black typeface. The figurative aspect is not particularly striking or distinctive. The word ‘PUMA’ will be associated with ‘a large American wild cat with a plain tawny to greyish coat, found from Canada to Patagonia’ (this information has been extracted from English Oxford Living Dictionaries on 31/10/2017 https://en.oxforddictionaries. com). As there is no connection with the relevant goods, it is therefore distinctive. It has to be noted that the term ‘PUMA’ (or its identical transliteration) is found in all languages of the relevant territories, except in Dutch (poema) and Greek (transliteration: poúma). However, in these cases the pronunciation is identical. As this meaning has no relation to the goods at hand, the word ‘PUMA’ is distinctive.

The contested sign ‘PUCAM’ has no meaning for the public in the relevant territory. Therefore, it is distinctive.

The typography of both signs is considered decorative. In this regard, it has to be recalled that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

The earlier mark and contested sign have no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the first two letters ‘PU-’ and the last two letters (even though they are in an inverted order in the earlier mark ‘-MA’ and ‘-AM’ in the contested sign), as well as in the font in which both signs are represented and that, as abovementioned, it is considered decorative. The signs differ in their length, as their number of letters is different, five in the earlier mark vs. four in the contested sign, the additional letter ‘C’ in the earlier mark and the inverted sequence of their last two letters. According to the Court what matters in the assessment of the visual similarity of two word marks is, rather, the presence, in each of them, of several letters in the same order (25/03/2009, T-402/07 ARCOL versus CAPOL).

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛PU-‘, present identically in both signs and the sound of their last letters, although they are placed in different order in each sign ‘-MA’ and ‘-AM’. The pronunciation differs in the sound of the letter ‛-C-’ of the earlier mark. The letter ‘-C-’ in the earlier mark placed after the letters ‘PU-’ will be strongly pronounced and noticed by consumers. Although, the two vowels present in both signs are identical, the differing consonant, namely ‘-C-’ and the inverter order of the letter M, placed at the end of the contested sign provide the signs with a quite different sounding overall. Even though they both contain two syllables, ‘PU-MA’ and ‘PU-CAM’, these syllables are pronounced differently due to the different end and length.

Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content of the earlier mark. Although, the public in the relevant territory will perceive the meaning of the earlier mark, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

In the present case, the Opposition Division does not believe that consumers will link the signs at issue. Although there are some visual and aural similarities between the signs, consumers will focus on the verbal element of the sign, while the colour and typeface will be perceived as decorative features and not as the most important elements indicating the origin of the goods and services. In addition, the earlier mark has a very clear meaning, namely that of ‘a large American wild cat’, while the contested sign is an entirely fanciful and imaginative sign. According to settled case-law, where the meaning of at least one of the two signs at issue is clear and specific so that it can be grasped immediately by the relevant public, the conceptual differences between those signs may counteract the visual and aural similarities between them. Therefore, faced with the contested sign, the Opposition Division considers that the relevant consumers will be not confuse it with the earlier mark since they will retain a clear mental image of the meaning of the earlier sign against another sign which means nothing at all.

On the other hand, even considering a degree of similarity between the signs another factor to take into account is that the establishment of such a link requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union, it is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 48.)

In the present case, there is no overlap between the relevant sections of the public for the trade marks in dispute. Each trade mark targets a different type of public. While the contested goods are aimed at goods in Class 9, namely cellular phones; Universal Serial Bus [USB] drives; batteries, electric; video surveillance cameras; closed circuit television cameras; radar apparatus; navigational instruments; electronic navigational and positioning apparatus and instruments; car navigation computers; headphones; anti-theft warning apparatus; remote control transmitters; monitors [computer programs]; computer peripheral devices; couplers [data processing equipment]; wearable activity trackers; cases for smartphones; cabinets for loudspeakers; protective cases for smartphones; car video recorders, the earlier trade mark was found to have a reputation only among for some goods in Class 18, namely: all-purpose athletic bags, all-purpose sports bags; bags for sports, belt bags and hip bags, gym bags, rucksacks; apparel, footwear, headgear in Class 25 and gymnastic and sporting equipment, tennis equipment, football balls, shin pads, knee, elbow and ankle guards for sports, sports gloves, tennis rackets, golf sticks, included in Class 28.. Goods in Class 9 are in general goods that cost more than the reputed goods. The reputed goods are sportswear or items, which are items bought more frequently than goods in Class 9. Even bearing in mind the opponent’s long established reputation for all the earlier goods, the Opposition Division finds it highly unlikely that the contested goods offered under the applicant’s sign would bring to mind the earlier mark. They have a different nature, they are not complementary and they would not be provided via the same distribution channels. Finally, they serve completely different purposes. It is also worth noting that the opponent did not provide any arguments at all in support of a link between these contested goods and the earlier reputed goods.

Given that the public for the contested sign is completely distinct from the relevant section of the public among which the earlier trade mark enjoys a reputation, no association will be made between the signs.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not successful under Article 8(5) EUTMR in connection to European Union trade mark registration No 12 579 728.

The examination of the opposition will continue under Article 8(1)(b) EUTMR in connection with the earlier right, namely international trade mark registration No 1 005 123 designating the European Union, since this earlier right was also invoked under Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 1 005 123 designating the European Union’.

1. The goods

The goods on which the opposition is based are the following:

Class 9:        Apparatus for recording, transmitting and reproducing of sound, images and/or data; handheld and mobile digital electronic devices for the sending and receiving of telephone calls, facsimiles, electronic mail, video, instant messaging, music, audiovisual and other multimedia works and other digital data; MP3 and other digital format audio and video players; handheld computers, personal digital assistants, electronic organizers, electronic notepads; magnetic data carriers; telephones, mobile phones, videophones, cameras; radio receivers; radio transmitters; video cameras; mobile telephone software; apparatus for electronic messaging; parts and accessories for handheld and mobile digital electronic devices (included in this class); parts and accessories for mobile phones (included in this class); mobile telephone covers; mobile telephone cases; mobile telephone cases made of leather or imitations of leather; mobile telephone covers made of cloth or textile materials; batteries; rechargeable batteries; chargers; chargers for electric batteries; car audio apparatus; cables for mobile phones; straps and lanyards for mobile phones; holders for mobile phones; headphones; stereo headphones; in-ear headphones; stereo speakers; audio speakers; audio speakers for home; personal stereo speaker apparatus; microphones; apparatus for connecting and charging portable and handheld digital electronic devices; parts and fittings for all the aforesaid goods.

The contested goods are the following:

Class 9:        Cellular phones; Universal Serial Bus [USB] drives; batteries, electric; video surveillance cameras; closed circuit television cameras; radar apparatus; navigational instruments; electronic navigational and positioning apparatus and instruments; car navigation computers; headphones; anti-theft warning apparatus; remote control transmitters; monitors [computer programs]; computer peripheral devices; couplers [data processing equipment]; wearable activity trackers; cases for smartphones; cabinets for loudspeakers; protective cases for smartphones; car video recorders

Some of the contested goods are identical or similar to goods on which the opposition is based, as for example, headphones that are identically included in both lists of goods. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods assumed to be identical are directed at the public at large, as well as, at professional public with specific professional knowledge or expertise in the IT sector. The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier mark is figurative mark comprised of the word element ‘PUMA’ in a bold black typeface and the image of a jumping cat across the right upper corner in black. The word ‘PUMA’ will be associated with ‘a large American wild cat with a plain tawny to greyish coat, found from Canada to Patagonia’ (this information has been extracted from English Oxford Living Dictionaries on 31/10/2017 https://en.oxforddictionaries.com/definition/puma). As there is no connection with the relevant goods, it is therefore distinctive. It has to be noted that the term ‘PUMA’ (or its identical transliteration) is found in all languages of the relevant territories, except in Dutch (poema) and Greek (transliteration: poúma). However, in these cases the pronunciation is identical. As this meaning has no relation to the goods at hand, the word ‘PUMA’ is distinctive.

The figurative element of the earlier mark reinforces the verbal element ‘puma’. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. Regarding this figurative element, it has to be recall that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

The contested sign is a figurative mark consisting of the word ‘PUCAM’, in a bold black typeface. The figurative aspect is not particularly striking or distinctive. The word ‘PUCAM’ has no meaning for the public in the relevant territory. Therefore, it is distinctive.

The typography of both signs is considered decorative.

The earlier mark and contested sign have no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the first two letters ‘PU-’ and the last two letters (even though they are in an inverted order in the contested sign ‘-MA’ and ‘-AM’) and in the font in which the earlier mark and the verbal element of the contested sign are represented, considered as abovementioned, decorative. However, they differ in their structure, as the earlier mark consists of one word and the contested sign consists of one word and one figurative element. They also differ in the number of letters, five in the earlier mark vs. four in the contested sign, the additional letter ‘-C-’ of the earlier mark, the order in which the last two letters are represented and the figurative element of the contested sign, considered distinctive.

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛PU-’, present identically in both signs and the sound of their last letters, although they are placed in different order in each sign ‘-MA’ and ‘-AM’. The pronunciation differs in the sound of the letter ‛-C-’ of the earlier mark. The letter ‘-C-’ in the earlier mark placed after the letters ‘PU’ will be strongly pronounced and noticed by consumers. Although, the two vowels present in both signs are identical, the differing consonant, namely ‘-C-’ and the inverter order of the letter M, placed at the end of the contested sign provide the signs with a quite different sounding overall. Even though they both contain two syllables, ‘PU-MA’ and ‘PU-CAM’, these syllables are pronounced differently due to the different end and length.

Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content of the earlier mark. Although, the public in the relevant territory will perceive the meaning of the earlier mark which is reinforced by its figurative element, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent the earlier trade mark its is particularly distinctive by virtue of intensive use in Spain, Czech Republic, Ireland, Cyprus, Austria, Lithuania, Latvia, United Kingdom, Italy, Estonia, Benelux, Sweden, Slovenia, Portugal, Romania, Bulgaria, Slovakia, Denmark, Poland, Hungary, Croatia, Greece, Finland, France in connection with the goods for which it is registered, namely ‘apparatus for recording, transmitting and reproducing of sound, images and/or data; handheld and mobile digital electronic devices for the sending and receiving of telephone calls, facsimiles, electronic mail, video, instant messaging, music, audiovisual and other multimedia works and other digital data; MP3 and other digital format audio and video players; handheld computers, personal digital assistants, electronic organizers, electronic notepads; magnetic data carriers; telephones, mobile phones, videophones, cameras; radio receivers; radio transmitters; video cameras; mobile telephone software; apparatus for electronic messaging; parts and accessories for handheld and mobile digital electronic devices (included in this class); parts and accessories for mobile phones (included in this class); mobile telephone covers; mobile telephone cases; mobile telephone cases made of leather or imitations of leather; mobile telephone covers made of cloth or textile materials; batteries; rechargeable batteries; chargers; chargers for electric batteries; car audio apparatus; cables for mobile phones; straps and lanyards for mobile phones; holders for mobile phones; headphones; stereo headphones; in-ear headphones; stereo speakers; audio speakers; audio speakers for home; personal stereo speaker apparatus; microphones; apparatus for connecting and charging portable and handheld digital electronic devices; parts and fittings for all the aforesaid goods’, in Class 9. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 18).

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(5) EUTMR. Reference is made to those findings, which are equally valid for Article 8(1)(b) EUTMR.

No evidence was filed in relation to the abovementioned goods registered under Class 9, consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

The goods are assumed to be identical. The degree of attention of the relevant public may vary from average to high. The distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to low degree, due to the coincidence in  the first two letters of the verbal element in the earlier mark and the contested sign ‘-PU’ and the coincidence in their typography, which is considered decorative. The signs also coincide in the last two letters, however as they are placed in an inverted order in the earlier mark ‘-MA’ and ‘-AM’ in the contested sign, this is considered more a difference than a similarity. Furthermore, the signs are not conceptually similar.

The differences between the signs are based in the concept of the earlier mark which will be reinforced by its figurative element, considered distinctive, the structure of the signs (word and figurative vs. one word only), their number of letters of the verbal element of the earlier mark and the contested sign (four vs five) and the additional verbal and figurative elements of each sign, such as, the letter ‘C’ in the contested sign and the jumping cat in the earlier mark. All these elements will be noticed by the relevant public.

Therefore, in a global appreciation of the relevant factors, the Opposition Division considers that the above mentioned differences are sufficient to counteract the similarities between the signs and to enable the relevant public to distinguish them. Therefore, their similarities are not sufficient to lead to a likelihood of confusion on the part of the public, even for identical goods.

The opponent base its opposition also on European Union trade mark registration No 12 579 728 ‘’ registered for, i) goods in Class 18, namely:  leather and imitations of leather, and goods made of these materials, namely briefcases, bags, bags for clothing, holdalls, weekend bags, multipurpose bags, all-purpose athletic bags, all-purpose sports bags, work bags, attaché cases, shopping bags, two-wheeled shopping bags, souvenir bags, bags (envelopes, pouches), for packaging, tote bags, handbags, small clutch purses, sling bags, gladstone bags, ladies' handbags, gentlemen's handbags, bags for men, hip bags, evening handbags, evening bags, beach bags, bags for sports, courier bags, changing bags, tool bags, bags for campers, belt bags and hip bags, pouches, gym bags, shoe bags, satchels, school book bags, school bags, shoulder belts and straps, shoulder bags, haversacks, camping bags, boston bags, casual bags, sling bags for carrying infants, diplomatic bags, document cases, folders, document wallets, boxes, luggage, travel luggage, trunks for travel purposes, baggage, flight bags, trunks and travelling bags, travel bags, flight bags, wheeled shopping bags, travelling handbags, vanity cases, not fitted, garment carriers, suit carriers, travel garment covers, duffel bags, rucksacks, bags for climbers, bags for campers, nappy bags; bags and pouches, included in Class 18, and small goods of leather, namely luggage tags, luggage label holders, bags for men, baggage, coin purses, coin purses, pocket wallets, wallets, coin purses, card holders, card holders, briefcases, credit-card holders, credit-card holders, credit-card holders, business card cases, driving licence cases, key bags, key bags, fanny packs, clutch bags, small pouches, toiletry bags, cosmetic purses, cosmetic purses, make-up bags, cosmetic purses, cosmetic purses, cosmetic purses, tie cases, laces; wallets, pocket wallets, key cases, handbags, briefcases, shopping bags, satchels, carrier bags, travelling bags, sports bags, included in Class 18, duffel bags, rucksacks, school bags, belt bags, toiletry bags, trunks and travelling bags; umbrellas, parasols and walking stick; ii) goods in Class 25, namely: apparel, footwear, headgear; iii) goods in Class 28, namely: games and playthings, gymnastic and sporting equipment, gymnastic and sporting articles (included in Class 28); skiing and tennis equipment; skis, ski bindings, ski poles, edges for skis, climbing skins for skis; balls, including balls for sports and balls for games, golf balls, tennis balls; dumb-bells, shot puts, discus, javelins, clubs for gymnastics, sport hoops; shin pads, knee, elbow and ankle guards for sports purposes; sports gloves, included in Class 28; tennis rackets, cricket bats, golf clubs, hockey sticks; table tennis rackets, badminton rackets and squash rackets and parts therefor, in particular grips, strings, grip and lead tape; bags for sports equipment, specially designed for the objects to be carried therein; specially adapted bags and sleeves for tennis rackets, table tennis rackets, badminton rackets, squash rackets, cricket bats, golf clubs and hockey sticks; roller skates and ice skates, inline skates, table tennis tables and nets; nets for sports, goal and ball nets; start and finish banners, tapes and awnings for sports events, sight screens for tennis courts, umpires' stools for tennis events. All these goods do not have any point in common with the applicant goods. They are manufactured by different companies, do not share the same distribution channels and target different consumers. Furthermore, they are neither commentary nor in completion. Therefore, they are dissimilar. It follows that the outcome cannot be different and also in the case of this earlier mark no likelihood of confusion exists.

For the sake of completeness, it has to be mentioned that there is no need to assess the applicant’s request for proof of use in respect of No 1 005 123 designating the European Union and European Union trade mark registration No 12 579 728 for all the goods on which the opposition is based, as the outcome of the present decision would not change.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Lynn BURTCHAELL

María Clara  IBÁÑEZ FIORILLO

Andrea VALISA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.