Judgments nº T-71/20 of Tribunal General de la Unión Europea, March 10, 2021

• Resolution Date: March 10, 2021
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-71/20

(EU trade mark - Opposition proceedings - Application for the EU word mark PUMA-System - Earlier EU figurative marks PUMA - Relative ground for refusal - Detriment to reputation - Article 8(5) of Regulation (EC) No 207/2009 (now Article 8(5) of Regulation (EU) 2017/1001))

In Case T-71/20,

Puma SE, established in Herzogenaurach (Germany), represented by P. González-Bueno Catalán de Ocón, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Gája and V. Ruzek, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

CAMäleon Produktionsautomatisierung GmbH, established in Dettenhausen (Germany),

ACTION brought against the decision of the First Board of Appeal of EUIPO of 27 November 2019 (Case R 404/2019-1), relating to opposition proceedings between Puma and CAMäleon Produktionsautomatisierung,

THE GENERAL COURT (Sixth Chamber),

composed of A. Marcoulli (Rapporteur), President, J. Schwarcz and C. Iliopoulos, Judges,

Registrar: J. Pichon, Administrator,

having regard to the application lodged at the Court Registry on 6 February 2020,

having regard to the response lodged at the Court Registry on 22 April 2020,

further to the hearing on 21 October 2020,

gives the following

Judgment

Background to the dispute

1 On 1 June 2017, CAMäleon Produktionsautomatisierung GmbH filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2 Registration as a mark was sought for the word sign PUMA-System.

3 The goods and services in respect of which registration was sought are in Classes 7, 9, 16 and 42 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

- Class 7: ‘Machine tools for machining and cutting profiles; cross-cut saws and circular saws for wood and light alloys; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); packaging machines; automatic warehouses; robots; machines for treatment of PVC; power screwdriver; painting machines; machines for the production of door and window frames; machines for assembling shuttering components; machines for processing aluminium, plastic and steel profiles, in particular for the window, door and facade industry; table and mitre saws; double mitre saws; automatic saws; wedge-cutting and V-cutting saws; milling machines; copy milling cutters; end milling cutters and automatic notching machines; water slot milling cutters; corner crimping machines; rod machining centres; welding machines; roughcasting machines; welding and cleaning lines; bending machines, including bending furnaces and bending installations; screw systems for reinforcing profiles; drilling machines, drilling rigs; punching; stops for machines for processing aluminium, plastic and steel profiles; assembly stands and assembly tables; rotary tables; saw fences for use on table saws; metalworking machine tools’;

- Class 9: ‘Computer hardware; computer software; computer hardware and software for the management of door and window frame production cycles and installations; magnetic and optical data carriers; computer programmes [programs], recorded; computers; computer peripheral devices; computer hardware and software for automation purposes; computer hardware and software for the management of machine tools; warehouse management systems; management systems for door and window frame production installations; communications systems for data relating to the production, assembly, storage, delivery of door and window frames; automatic handling systems for door and window frame production installations; cell phones; portable computers; printers for computers; programs for personal computers, mobile telephones and handheld computers; heatdetectors; level indicators; headphones; headsets; cables for personal computers, mobile telephones and palmtop computers; bar code readers; measuring instruments; programs for computers; computer-aided design (CAD) software; software for estimating, selling, designing and producing shuttering and curtain walls; software for programming and managing machine tools; software for checking (supervision) of industrial production and automation; computer programs for estimating, selling, designing and producing shuttering and curtain walls; computer programs for programming and managing machine tools; computer programs for checking (supervision) of industrial production and automation; software for the management of door and window frame production cycles and installations; computer programs for managing shuttering production cycles and installations; computers; peripherals adapted for use with computers; magnetic and optical data carriers; data-processing equipment and computers’;

- Class 16: ‘Catalogues relating to computer software; computer software operating manuals; instruction manuals; instruction manuals for personal computers, mobile telephones and palmtop computers; instruction manuals for the certification of door and window frames; printed forms; printed matter for promoting and selling software for designing, producing and/or selling doors, windows and partitions; printed matter for promoting and selling software for managing machine tools and checking (supervision) of industrial production and automation; books; user manuals (handbooks) for computer programs for designing, producing and/or selling doors, windows and partitions; user manuals (handbooks) for computer programs for managing machine tools and checking (supervision) of industrial production and automation’;

- Class 42: ‘Updating and maintenance of computer software and programs; configuring computer hardware using software; configuration of computer networks by software; configuration of computer software; computer hardware and software consultancy; creation, maintenance and adaptation of software; installation, maintenance, updating and upgrading of computer software; computer systems integration services; rental of computer hardware and computer software; design, development and implementation of software; computer software research; computer software technical support services; technical project studies in the field of computer hardware and software; development of computer programs recorded on data media (software) designed for use in construction and automated manufacturing (CAD/CAM); development of computer software for computer aided design/computer aided manufacturing [CAD/CAM]; upgrading of computer software; development and testing of computing methods, algorithms and software; computer programming; testing, analysis and evaluation of the goods and services of others for certification purposes; computer programming in relation to applications for designing, producing and/or selling doors, windows and partitions; computer programming in relation to applications for managing machine tools and checking (supervision) of industrial production and automation; creating programmes for data processing.’

4 The trade mark application was published in European Union Trade Marks Bulletin No 2017/138 of 24 July 2017.

5 On 24 October 2017, the applicant, Puma SE, filed a notice of opposition pursuant to Article 46 of Regulation 2017/1001 to registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above.

6 The opposition was based on, inter alia, the following earlier rights:

- the EU figurative trade mark reproduced below, which was registered on 30 June 2014 under the number 12579728 in respect of goods in Classes 18, 25 and 28 corresponding, for each of those classes to, inter alia, the following description:

- Class 18: ‘Leather and imitations of leather, and goods made of these materials, namely … bags, … all-purpose sports bags, … bags for sports, … gym bags, …’;

- Class 25: ‘Apparel, footwear, headgear’;

- Class 28: ‘Games and playthings, gymnastic and sporting equipment, gymnastic and sporting articles (included in class 28); skiing and tennis equipment; …’;

- the EU figurative trade mark reproduced below, which was registered on 30 June 2014 under the number 12579694 in respect of goods in Classes 18, 25 and 28 corresponding, for each of those classes to, inter alia, the following description:

- Class 18: ‘Leather and imitations of leather, and goods made from these materials, namely … bags, … multipurpose sports bags, … bags for sports, … gym bags, …’;

- Class 25: ‘Apparel, footwear, headgear’;

- Class 28: ‘Games and playthings, gymnastic and sporting equipment, gymnastic and sporting articles (included in class 28); skiing and tennis equipment; …’;

7 In support of the opposition, the applicant relied on the reputation in the European Union of the two earlier EU trade marks referred to in paragraph 6 above (respectively ‘the first earlier mark’, ‘the second earlier mark’ and, together, ‘the earlier marks’) for all the goods covered by those marks.

8 On 17 December 2018, the Opposition Division rejected the opposition in its entirety, on the ground, in essence, that it was unlikely that the public would establish a link between the signs at issue.

9 On 15 February 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

10 By decision of 27 November 2019 (‘the contested decision’), the First Board of Appeal of EUIPO annulled the decision of the Opposition...