Direction makes the difference
Puma lacked a prerequisite for a confusion finding, writes Rebecca McBride. O/721/19, PUMA (Opposition), UK IPO, 27th November 2019
On 19th July 2018, Shanghai Warrior Shoes Co. Ltd (the Applicant) applied to register a mark covering a variety of goods in class 25. On 31st October 2019, PUMA SE (Puma) opposed all the goods, based upon s5(2)(b), s5(3) and s5(4)(a) of the Trade Marks Act 1994, relying upon its earlier EU trade mark (also shown below) registered in classes 18, 25 and 28.
Under s5(2)(b), although the goods were identical (the Applicant’s goods fell within Puma’s broader terms), the marks were deemed not similar. Visually, there would be a medium degree of attention and the purchase was likely to be primarily visual. Ultimately, the marks would be perceived as depicting two abstract devices.
Even though both have a curved main stripe following a diagonal direction, the Applicant’s stripe travels concavely upwards, and Puma’s concavely downwards. The additional vertical stripes in the Applicant’s mark created a noticeable difference, and overall there was no visual similarity between the marks. Further, even considering the marks in the context of their use (ie, on the outer side of sports shoes), the devices alone looked “starkly different”.
By definition, it was unnecessary to consider aural similarity of a figurative mark without word elements. Conceptually, neither mark had any concept discernible from its inherent qualities. Accordingly, there was no need for the likelihood of confusion assessment, and the claim under s5(2)(b) was unsuccessful.
Under s5(4)(a), Puma claimed goodwill in the UK as a result of use of its form-strip mark since 1958 in relation to “apparel, footwear and headgear”. Again, although there was substantial goodwill at the relevant date, the lack of overall similarity between the marks resulted in a finding of no misrepresentation.
Similarly, under s5(3), while Puma’s mark had acquired a significant reputation from its association with famous athletes and celebrities, and offered high sales and marketing figures, there was no similarity when the marks were compared overall. Accordingly, the Hearing Officer followed the approach in Pear Technologies v EUIPO (T-251/17): that a visual comparison should not take into account the earlier mark’s reputation. As the marks were not similar, the public would not perceive any link and, therefore, this final ground also failed.
The decision is a reminder that overall similarity between marks is a prerequisite for the existence of a likelihood of confusion. Only where there is some overall similarity, even where it is faint, is it necessary to carry out the global assessment and determine whether there is a likelihood of confusion. Where there is no similarity, as was the case here, there should be no further assessment.
Key points
- The Hearing Officer followed the General Court’s approach in Pear Technologies v EUIPO (T-251/17) and reinforced the rule that the reputation of an earlier mark should not be considered when carrying out a visual comparison of similarity
- Consideration of the likelihood of confusion is triggered only after a finding of similarity between the marks
- While the threshold of similarity is not unduly burdensome, its significance should not be underestimated