Partner in trademark protection

markmatters
Light, essential and fun trademark news from Knijff
Feb
28
2018
« MARKMATTERS HOME  /  The kinky cat

The kinky cat

The playing catAs a well-known brand you want to defend your reputation. This means that you sometimes do not want to be associated with certain products or services.

Take the recent example of Puma. Puma came into action against a trademark application Puma Swede for clothing. Logical, because the consumer could think that Puma Swede is the Swedish branch of Puma. But Puma Swede was also filed for adult toys (yes those). This is a product that is completely different from clothing. Confusion is therefore not at hand.

For those kind of cases, well-known trademarks have the wider scope of protection and can also act against non-similar products. This is however not an easy protection to get. You have to demonstrate the reputation, often a heavy task. Puma takes it with ease. Furthermore, there must be a link between the trademarks concerned.  This requires similarity between the trademarks and an overlap in the target group of the products. The latter however does not apply to clothing and adult toys: the target group differs. Despite this fact Puma is successful at the end as the EUIPO finds that a link will be made between Puma and Puma Swede because the reputation of Puma essentially exceeds the target group. In other words, the reputation of Puma is so big that consumers will make the link after all. And so Puma can act against Puma Swede.