Puma Successful in Overturning Lookalike Trademark

In a decision by the Court of Justice of the European Union (CJEU) late last week, Puma was awarded a victory in its claim against a trademark application by Polish footwear brand, Sinda Poland. The two have been battling over Sinda’s application for a Community Trademark for a leaping creature (see below, left) since 2012 when Puma initiated a claim against Sinda in the European courts system. While there are some similarities in terms of shape and composition between the two marks, the notable differences in form and style arguably weigh more heavily in favor of Sinda.

Puma opposed Sinda’s registration on the grounds that it infringed its own mark by being visually and conceptually similar to its well-known logo, featuring a leaping Puma, per Article 8(1)(b) of The Community Trade Mark Regulation (CTMR). The German sportswear brand, which recently announced an impending collaboration with reality television star Kylie Jenner, also argued that as a result of the similarity of the trademarks at issue, there is a likelihood of confusion amongst consumers, who may think that Sinda’s products were created by or somehow affiliated with Puma.

In the initial decision in the matter dating back to September 2013, the Office of Harmonisation of the Internal Market (OHIM) dismissed Puma’s objections to the Sinda mark, holding that the two logos were too dissimilar and thus, the likelihood of confusion was very low.

Puma appealed this decision and in July 2014, the OHIM’s appeal division accepted Sinda’s claim that its logo was composed of images of “two or more animals together in one,” as distinct from Puma’s trademark. Further, Sinda held that its logo’s components were associated with body parts of several animals, to form a unique creature dissimilar to a puma.

Again, Puma were dissatisfied by the court’s decision and appealed to the highest court, the CJEU.

The CJEU ruled in the case late last week, holding that Sinda’s mark does, in fact, infringe Puma’s mark. The court found that Sinda was in breach of Article 8(1)(b) CTMR and that the lower courts failed to consider Sinda’s mark as a whole, with respect to Puma’s, in order to determine the visual and conceptual similarity of the marks. Further, the CJEU held “... the mark applied for and the earlier mark are both black silhouettes of animals ... the curves of the back and belly of the two animals depicted are not identical but have undeniable similarities.”

After a long but worthwhile litigation battle, Puma prevailed against Sinda. It comes as little surprise that Puma sought to protect their reputable and global brand, which has associations with celebrities, such as Rihanna and Usain Bolt. The use of similar marks such as Sinda’s can have detrimental effects on the reputations of well-established brands, so it is clear why they engage fierce protection of their brands.

Naomi Providence is final year Law student at the University of East Anglia, UK. As an aspiring Intellectual Property lawyer, she has a keen interest in how the law relates to creative industries, particularly the fashion industry.