By a decision of 14 April 2021 (Dnro 20101/03.04.04.00.05/2020), the Supreme Administrative Court has overturned a decision of the Market Court, ruling in favour of opponent Puma SE and finding that there was a likelihood of confusion between the marks PUMA and RUMA.
The marks, which covered identical goods in Class 25, are depicted below:
In late 2019 the Market Court had found that there was no likelihood of confusion between RUMA and PUMA, emphasising that the opponent had filed no evidence of PUMA’s reputation in Finland and that the marks were phonetically and conceptually different (‘ruma’ meaning ’ugly’ in Finnish).
Supreme Administrative Court decision
However, the Supreme Administrative Court has now taken a different view.
According to the court, from a visual point of view, the first letter in the mark RUMA is the inverted letter ‘R’. The initial letters ‘P’ and ‘Я’ in the marks are thus different and, to some extent, the fonts used also differ from each other. On the other hand, the marks are equally short, the last three letters are identical, and ‘P’ and ‘Я’ resemble each other. The court thus found that, despite the fact that the letter ‘R’ was inverted in the opposed mark, the two marks were predominantly similar in their appearance.
From a phonetic point of view, the pronunciation of the signs was different as the opponent’s mark begins with a ‘P’ and the opposed mark with the letter ‘Я’. Moreover, the Supreme Administrative Court found it “questionable” whether the relevant public would perceive the meaning of the word ‘puma’ and would thus pronounce it as ‘puuma’ in accordance with the (slightly different) Swedish or English pronunciation.
The court stated that, even though the opponent did not submit evidence of the earlier mark’s reputation in Finland, its scope of protection was broad: the mark had a strong distinctive character, with no descriptive meaning in relation to the relevant goods.
According to the Supreme Administrative Court, it was still necessary to assess the weight of these various factors given the type of goods in question, and the conditions under which they were sold. Puma had submitted to the court that the goods are sold on shelves and clothing rods in various kinds of shops, and that consumers tend to compare the products physically side-by-side. The PUMA trademark is typically printed or sewn into the products themselves. The purchase of the goods thus takes place independently by looking at the products themselves.
Products bearing different brands are typically sold side-by-side and divided into product groups. This is especially the case in online shops, where goods falling within Class 25 are sold in large quantities.
Given that the goods in question are often sold in shops or online stores, where the goods of different manufacturers are arranged side-by-side, thus making it easy to compare them, the court gave particular weight to the similarity of the overall visual appearance of the marks and the similarity of the goods. In these circumstances, an average consumer was likely to pay less attention to the pronunciation and meaning of the marks. All these factors pointed to a likelihood of confusion between the marks.
On the same day, the Supreme Administrative Court issued another decision (2021:41) in relation to the word mark RUMA based on an almost identical reasoning, ruling that there was also a likelihood of confusion between the opponent’s earlier figurative mark and the word mark RUMA.
Comment
It seems that the high reputation of the PUMA mark for clothing and shoes in Finland had an impact on the decisions, even though the opponent did not file sufficient evidence to prove such reputation. Interestingly, the Supreme Administrative Court did not consider whether reputation elsewhere in the European Union would have been relevant.
This article first appeared on WTR Daily, part of World Trademark Review, in (April/2021). For further information, please go to www.worldtrademarkreview.com
