Puma or Rolex – Which is more famous?

A challenging question, isn’t it? As different as these brands may be, both are certainly well-known among the general public. While Puma’s sportswear is more present in the everyday life of consumers, Rolex watches enjoy a more luxurious aura. So one could argue that both trade marks should have a similar scope of protection. The General Court and German Patent Court, however, seem to have disagreed in two recent decisions:

The General Court’s decision

In the matter Puma v EUIPO - DN Solutions (PUMA), the General Court had to decide whether the EU trade mark application

for ‘lathes; CNC (computer numerical control) lathes; machining centers; turning center; electric discharge machine’ in Nice Class 7

took unfair advantage of and was detrimental to the distinctive character and repute of Puma’s trade
mark

(registered inter alia for ‘clothing’) under Art. 8(5) of the former Community Trade Mark Regulation No. 207/2009 (being essentially identical to the currently applicable Art. 8(5) of Regulation No. 2017/1001).

The General Court held that the signs were phonetically and conceptually identical, and visually highly similar. The earlier mark was deemed to have an “exceptional level of recognition” for ‘clothing’. This high reputation went beyond the general public, meaning that the specialist public for ‘lathes; CNC (computer numerical control) lathes; machining centers; turning center; electric discharge machine’ would also be aware of Puma’s trade mark.

One of the unwritten conditions of Art. 8(5) of Regulation No. 207/2009 is that the relevant public must establish a link between the trade marks in question in the sense that the later mark calls the earlier mark to mind. The existence of such a link is assessed globally, taking into account all relevant factors, including the degree of closeness or dissimilarity between the goods or services.

The General Court accepted that if the strength of an earlier mark’s reputation goes beyond the relevant public for its goods, a finding of a link between the two marks may be justified even if the respective goods are dissimilar, and even if the respective relevant publics are distinct. The Court also held that goods may be so dissimilar that the later mark is unlikely to bring the earlier mark to mind.

The General Court denied a link in the present case because --

the goods covered by the marks at issue are completely different and belong to radically distinct business sectors.

In its reasoning, the General Court applied a higher standard of proof for establishing a link --

since the earlier mark is composed not of a fanciful name but of a common noun which primarily designates an animal.

The judges concluded that --

in the light both of the specific nature of the goods covered by the mark applied for and of the sector to which they belong, and of the specific nature of the public at which they are aimed, and notwithstanding the strength of the earlier mark’s reputation, its highly distinctive character and the degree of similarity between the signs at issue, a connection would not be made between the marks at issue.

Hence, the opposition was unsuccessful.

The German Patent Court’s decision

In contrast, Rolex prevailed in an opposition against entirely different goods in the case Rolex v Roless. On the basis of its International Registration for ‘ROLEX’, covering inter alia ‘watches’, Rolex filed an opposition against the trade mark 

registered for various goods in Nice Classes 2 (including ‘paints’ and other goods for painters), 19 (including ‘road building materials and pavement materials’) and 20 (including different types of furniture). The opposition was based on the German equivalent to Art. 8(5) of Regulation No. 207/2009, i.e. an infringement of Rolex’ right to a trade mark with a reputation. The conditions are essentially the same as for Art. 8(5) of Regulation No. 207/2009.

The German Patent Court found that the ‘ROLEX’ trade mark is exceptionally well-known among the general public and must be regarded as famous. The signs were considered to be highly similar phonetically.

Unlike the General Court in the Puma case, the Federal Patent Court accepted a link between the trade marks even for goods that are entirely different to watches, such as ‘road building materials’, this because of the notable public awareness of the ‘ROLEX’ brand:

The more famous exceptionally well-known trade marks […] become, the more they detach from the goods and services for which they enjoy protection and have been used. The sign itself […] becomes a valuable […] asset. (Translation of the author from German)

The judges also confirmed that the contested trade mark is detrimental to the distinctive character of ‘ROLEX’. The protection against dilution applied to “practically all goods and services”, i.e. also those entirely different to watches. The Court mentioned ‘Coca-Cola’, ‘adidas’ and ‘LEGO’ as similar exceptionally well-known marks.

Comment

The scope of protection of these two iconic trade marks appears to be different: While Rolex gets the blessing to enforce its trade mark against “practically all goods and services”, Puma’s scope of protection appears to be more limited. Did the German Patent Court go too far or the General Court not far enough? Or can the cases be distinguished?

In this Kat’s opinion, the fact that ‘PUMA’ has a meaning could be the essential differentiating factor. It may indeed be more difficult for consumers to establish a link if the well-known sign also has a clear and specific dictionary meaning that is easily understood.

In the context of (very) different goods, the first thing that comes to mind may not be the well-known trade mark but the common meaning, here that of an animal. In this instance, the onus of proof is on the opponent to show that the public actually thinks of the earlier mark when it sees the sign on entirely different goods. A properly conducted market survey might be helpful.

The General Court did not seem to have considered that it is sufficient for the success of an opposition if the earlier mark is infringed in a (non-insignificant) part of the EU. Thus, if the word ‘puma’ does not refer to the animal in one of the 24 official languages of the EU, the outcome might have been different.

Picture is by Pixabay and is used under the CC0 1.0 licensing terms.