EU General Court rules on PUMA trade mark dispute - EU Court decision on AMAZONIAN GIN COMPANY

EU General Court rules on PUMA trade mark dispute

In a recent judgment of 28 February 2024 (T-184/23), the General Court of the European Union dealt with a trademark dispute involving the well-known brand PUMA against the trade mark BERTRAND PUMA La griffe boulangère.

The case involves Puma SE, the worldwide recognised German fashion company, and a French bakery and confectionery equipment company. The contested mark, was a figurative mark consisting of a feline jumping over the name “BERTRAND PUMA La griffe boulangère”, covering goods and services relating to machinery for the bakery industry, within Classes 7, 9 and 11 of the Nice Classification.

The German fashion company opposed the registration on the basis of its iconic logo, protected through its EU figurative mark No 12579694, registered for goods in Class 25, including clothing, footwear and headgear. It claimed that since its mark was particularly well known, it should benefit from the enhanced protection afforded to marks with a reputation under EU Trade mark Regulation Article 8(5) and that Bertrand Puma’s trade mark application should be refused due to the similarity between the signs, even though there was no overlap in the goods and services covered by the two marks.

The EUIPO Board of Appeal upheld the Opposition Division's decision in rejecting PUMA’s opposition because, despite the reputation of the earlier PUMA mark and the existence of some similarity between the two signs there was no risk of confusion or consumers linking the two companies due to the differences in the goods and markets covered by the two trade marks. The German company then appealed to the General Court, alleging errors in the assessment of the similarity of the marks and the possibility of unfair exploitation of the distinctive character of the earlier PUMA trade mark.

The General Court had to determine whether there was a likelihood of confusion between, or establishing a link between the “Bertrand Puma” trade mark and the previous "PUMA" mark of the renowned fashion company, in particular given the differences in the goods and services covered.

The General Court upheld the decision of the EUIPO and dismissed PUMA's appeal.

The Court held that, although PUMA was a well-known brand for sportswear, footwear and headgear aimed at the general public, the goods covered by the Bertrand Puma mark were aimed primarily at professionals in the bakery sector. That difference in markets and target groups was decisive in establishing the lack of connection between the marks at issue.

EU General Court rules on descriptiveness of the trade mark AMAZONIAN GIN COMPANY

In a recent decision of the General Court of the European Union, in case T-756/22, a dispute arose concerning the invalidity of the European Union denominative trade mark AMAZONIAN GIN COMPANY. The question at issue was whether the mark in question was descriptive of the goods it covered.

William Grant & Sons Irish Brands Ltd applied for a declaration of invalidity with the European Union Intellectual Property Office (EUIPO) against the EU trade mark AMAZONIAN GIN COMPANY, registered by Mr Eric Roethig López. The company claimed that it was descriptive of the alcoholic beverages it represented, in particular gin, which falls within Class 33 of the Nice Classification.

Under Article 7(1)(c) of the EU Trade Mark Regulation, trade marks may not be registered if they consist exclusively of signs or indications which may serve, in trade, to designate the geographical origin of the goods.

The EUIPO Board of Appeal upheld the invalidity claim, finding that the AMAZONIAN GIN COMPANY mark was composed of descriptive terms in English, which had clear and directly related meanings to the production of gin in the Amazon region. However, this decision was appealed by Mr Lopez before the General Court.

The main issue before the Court was whether the trade mark was descriptive of the goods it represented, particularly gin, and whether the words ”Amazonian", "gin” and "company " together in the trade mark directly indicated the origin of the products.

After analysing the arguments put forward by both parties, the Court upheld the decision of the EUIPO Board of Appeal and dismissed the applicant's appeal. The Court held that the trade mark AMAZONIAN GIN COMPANY was descriptive of the geographical origin of the goods, since the combination of the words 'Amazonian' and 'gin' clearly evoked the Amazon rainforest and the essential characteristics of gin produced in that region.

Despite the applicant's arguments concerning the alleged evocative and non-descriptive character of the mark, the Court found that the term 'Amazonian' was capable of conveying a positive image of the botanical products used in the production of gin, which reinforced its descriptive character, especially considering the fact that some of the plants used to create the gin in question did in fact originate from the Amazonian region. Therefore, it was concluded that at least a significant part of the English-speaking public would perceive the mark as a direct reference to a company producing gin associated with the Amazon region.