In April, the Supreme Administrative Court in Finland resolved a dispute over the risk of confusion between the trademark PUMA and RUMA trademarks in favour of Kolster’s customer Puma. Previous decisions of the Finnish Patent and Registration Office (PRH) and the Finnish Market Court had interpreted the dispute in favour of the RUMA trademarks.
The dispute resolved by the Supreme Administrative Court in favour of Puma concerned the risk of confusion between the PUMA figurative mark and the RUMA word mark and figurative mark. Since 2017, the dispute had first been considered by the Finnish Patent and Registration Office (PRH), then by the Market Court, and now in the last instance by the Supreme Administrative Court.
Registration was applied for RUMA trademarks in goods classes 25 and 28 that include, among other things, clothing and sports equipment – products for which PUMA is a well-known manufacturer. The dispute was therefore about whether the trademarks applied for registration could be confused with the PUMA trademark among Finnish consumers.
“When we went against these trademarks, we were quite confident that PRH would find that they could be confused with PUMA’s previously registered trademarks”, says Kolster’s lawyer Jani Kaulo.
“However, to our great surprise, first PRH and at the appeal stage also the Market Court considered the trademarks to be sufficiently different both visually and phonetically, even though the trademarks are 75% identical and the first letters are very close to each other visually. Fortunately, we were granted a rare leave to appeal to the Supreme Administrative Court, which overturned the earlier decision”, Kaulo continues.
Similarity of appearance was decisive
During the legal process, Kolster and Puma emphasised the global recognition, and thus the strong distinctiveness, of the PUMA trademark. The Supreme Administrative Court ended up supporting this view in its decision.
PRH and the Market Court had previously reached the opposite interpretation to the SAC, i.e. they did not consider there to be a risk of confusion between the trademarks. They justified their decisions, for example, on the grounds that the semantic meanings of the trademarks are so different that they do not cause confusion in the eyes of the target public and that they are pronounced differently.
“Even though it is often difficult to draw the line with regard to risk of confusion between trademarks, we do not consider that to have been the case here. The Supreme Administrative Court quite rightly emphasised that the PUMA trademark is highly distinctive in clothing and sports equipment. The SAC also stressed that the trademarks being compared cover identical goods and that these goods are often sold in store or online in such a way that the products of different manufacturers are placed side by side, or so that comparing them in parallel is very easy. In this kind of a situation, the average consumer may be expected to pay less attention to the way in which the trademarks are pronounced and to their semantic meaning. Consequently, the similarity of the goods covered by the trademarks and the similarity of the appearance of the trademarks become emphasised”, Kaulo says.
“It is good that leave to appeal was sought from the Supreme Administrative Court in this case, even though it is very difficult and rare to obtain one. It would have been quite unfortunate for trademark holders if the interpretation and decision of the Market Court had remained the final and guiding case law in view of similar cases in the future.”
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