In oppositions, when considering reputation grounds, the existence of a link between the marks at issue must be assessed globally, taking into account all factors relevant to the circumstances of the case, including, inter alia, the strength of the earlier mark’s reputation. Similar considerations apply when considering injury. On this basis, assessing the earlier trade mark’s reputation and its degree is an essential step.

In this decision, the General Court found that the degree of reputation of the earlier mark must be determined precisely or, at least, the best-case scenario for the losing party must be considered; framing a reputation as “at least average” is insufficient.

Background

In December 2012, CMS Costruzione macchine speciali SpA filed an international registration designating the European Union for the figurative mark shown below depicting, inter alia, a feline bounding to the left:

The EU designation covers various goods and services in classes 7, 11 and 37 broadly related to heating, air conditioning and refrigeration machinery and the installation and repair of such goods.

In November 2013, CMS Costruzione macchine speciali SpA’s EU designation was opposed by Puma on the basis of two of its earlier figurative European Union trade marks (EUTMs), shown below, covering, inter alia, goods such as clothes in class 25.

The opposition was directed against the EU designation in its entirety and was based on reputation grounds.

In 2014, the Opposition Division rejected the opposition on the ground that Puma had not established a reputation in the earlier marks. Since, there has been a series of decisions from the Board of Appeal and the General Court, this being the third time the matter has gone to the General Court.

In the contested decision at hand, the General Court considered the Board of Appeal’s decision to (again) dismiss Puma’s appeal. The Board of Appeal had dismissed the appeal on the basis that the evidence showed the earlier marks to have “at least” an average degree of reputation for sporting shoes and sports clothing, at least in some EU member states. Despite this “at least average reputation”, it rejected that a link between the marks would be established. For the sake of completeness, it also considered and rejected the claim that any harm would be established.

The General Court’s decision

In this third decision, the General Court considered whether the Board of Appeal erred in law by failing to establish the precise degree of reputation enjoyed by the earlier marks, bearing in mind that the strength of the reputation is a relevant factor for the overall assessment of whether there is a link between the marks at issue (and also as to whether injury has been caused).

On this basis, the General Court found that the assessment requires a definitive conclusion, which means that no analysis can be carried out on the basis of vague hypothesises that do not acknowledge a reputation with a specific level of strength. Therefore, the General Court found it insufficient for the Board of Appeal to find “at least an average degree” of reputation.

In this respect, the General Court held that it is required to determine precisely the degree of reputation (average, high or even very high), or at least expressly take into account the best-case scenario for the losing party before it. If a decision maker is to undertake a best-case scenario assessment, the assessment should be explicit and clear, and not implicit or abstruse.

In this case, the best-case scenario would be to consider a very high degree of reputation for the earlier marks when considering the overall assessment of the link. Notably, the General Court found that Puma had claimed a “very high degree of recognition on the market” and a “well-known character” for its earlier mark, and so it was entitled to such an assessment.

The General Court concluded that by not expressly considering the best-case scenario for Puma, the Board of Appeal had erred in law. Therefore, the contested decision was annulled in its entirety.