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
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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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.
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.
- 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… ‘