Header photo: Starkvisuals / Pixabay
PUMA is one of the world’s most famous trademarks. They have an interest in preserving their global market position and enforcing their rights. Most recently, they enforced their trademark against a Danish fashion brand called DK COMPANY, which has applied for a trademark registration for e.g. shoes.
PUMA reacted because they think DK COMPANY has applied for a trademark too similar to PUMA’s well known trademarks. Therefore, they tried to prevent DK COMPANY’s registration by filing an opposition against it to the Danish Patent and Trademark Office.
PUMA in a strong position
In the opposition decision, the Danish Patent and Trademark Office presumed that one of PUMA’s trademarks is well-known according to trademark law.
Well-known trademarks have a greater scope of protection than less known trademarks. Therefore, if you have a well-known brand, you are in a stronger position and able to prevent others from applying for registration or using brands that can potentially sponge off on the goodwill associated with the well-known brand. However, the course of events has not been easy for PUMA.
Photo credit: The Danish Patent and Trademark Office.
In the decision of the Danish Patent and Trademark Office, the board assessed both the trademarks as they were applied for and registered as well as how the conflicting trademarks were to be placed on shoes.
The board found that PUMA’s trademarks were more compact and had a more fluctuating path than DK COMPANY’s trademark. In addition, the board found that the trademark applied for could not be placed on a shoe, where the shape leads backwards in the same way as it does on PUMA’s trademarks.
Thus, the Board concluded that the brands have different modes of expressions and are not confusingly similar. In other words, PUMA could not prevent DK COMPANY’s trademark from being registered. Therefore, PUMA chose to appeal the decision to the Board of Appeal for Patent and Trademarks.
The Board of Appeal concluded that the Danish Patent and Trademark Office should not have assessed the case in relation to the possible placement of the marks. However, the Board of Appeal did agree that the marks were not confusingly similar.
PUMA could thus not get the Board of Appeal’s word to prevent DK COMPANY’s trademark. Once again, PUMA chose to appeal the decision – this time, they went to the Maritime and Commercial High Court. On 4 July 2019, they too rejected that the trademarks in question were confusingly similar. The period allowed for appeal is still open, and it will be exciting to see whether PUMA appeals the decision yet again.
What can we learn from this?
None of the conflicting trademarks are applied for with images of how they are to be placed on e.g. a shoe. It is therefore unusual why the placement of the marks is even addressed in the first decision.
Further, it is interesting that there has been a specific focus on how the brands can be placed on shoes, even though PUMA’s brands include more goods than just shoes.
The board must relate to how the labels are shown in the register – not how they can be used on the market. This is probably the reason why the Board of Appeal and subsequently the Maritime and Commercial High Court rejected the criterion of any placement of marks on shoes.
If the trademarks had been applied for with a display of their placement on shoes, the situation would be different. Then the placement would in fact have to be included as a criterion in the assessment by the Board of Appeal and the Maritime and Commercial High Court.
This case can teach us that the manner of how the mark is depicted in the trademark application is crucial, since board decisions are based strictly on the application and in relation to the goods and services that are mentioned herein. How firms use their trademarks in the market is in general something to be assessed according to the Marketing Act.
The decision thus illustrates the importance of thinking through many different options when applying for a trademark, as it can have decisive significance for the assessment in a possible conflict case. The advice you receive at the time of application can therefore be quite important.
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