European Union: PUMA Fails to Prove Possibility of Harm to Trademarks

Published: March 5, 2025, in the INTA Bulletin

The decision of the General Court of the European Union in case T-30/24, addressed Puma SE’s opposition to an EU figurative trademark application LI PUMA DESIGN (the application) by Luca Gottardo Li Puma. The application, covering recycling services (Class 40), was claimed to infringe Puma’s earlier marks, registered for sportswear and related goods (Class 25). The decision was announced on December 4, 2024.

Puma argued under Article 8(5) of Regulation 2017/1001, that if the application to register was successful, it could unfairly exploit or damage its well-known trademarks, and emphasized the reputation of the PUMA trademark and the potential association between the application and its own.

However, the European Union Intellectual Property Office Board of Appeal (BoA) of the European Union Intellectual Property Office confirmed the Opposition Division’s decision and rejected the opposition. The BoA ruled that as the specific nature of the services fell within significantly different market sectors, the public would not establish a link between them, notwithstanding the strength of the reputation of the PUMA trademark. Even if the public established a link, it was unlikely that this would be detrimental to the PUMA trademark.

Article 8(5) of Regulation 2017/1001 stipulates the following:

[A]n application shall not be registered where it is identical with, or similar to, an earlier trademark, irrespective of whether the goods/services for which it is applied are identical, similar or not similar, where, the trademark has a reputation in the relevant territory, and where the use without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

The General Court upheld the BoA’s decision, reiterating that Article 8(5) requires more than reputation alone to block registration. It necessitates proof of either a direct link in the minds of the public, with detriment to the distinctive character or reputation of the earlier mark, or unfair advantage. In this case, the goods and services in question targeted entirely distinct groups and Puma had not demonstrated that the application would cause harm or exploit its reputation.

The judgment underscores the principle that trademark protection under Article 8(5) cannot extend to speculative harm or mere assertions of reputation. Instead, it requires concrete evidence of the potential impact on the earlier trademark. The judgment highlights the nuanced balance between protecting well-known trademarks and ensuring fair opportunities for new applications in unrelated sectors.

Indeed, this judgment serves as a reminder that even owners of well-known trademarks must substantiate their claims when opposing trademark applications.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.