THE BOARDS OF APPEAL

DECISION
of the First Board of Appeal
of 9 January 2017

In Case R 1304/2016-1

PUMA SE
PUMA Way 1
91074 Herzogenaurach
Germany Opponent / Appellant
represented by DESPACHO GONZLEZ-BUENO, S.L.P., Calle Velzquez 19, 2
dcha., 28001, Madrid, SPAIN
v

SINDA POLAND CORPORATION Sp. z o.o.

ul. Zamoyskiego 47A/59
03-801 Warszawa
Poland Applicant / Respondent
represented by Bocheska, Al. Niepodlegoci 222 kl. A lok. 20, 00-663, Warszawa,
POLAND

APPEAL relating to Opposition Proceedings No B 2 109 281 (European Union trade

mark application No 11 142 395)

THE FIRST BOARD OF APPEAL

composed of Th. M. Margellos (Chairperson), C. Rusconi (Rapporteur) and

Ph. von Kapff (Member)

Registrar: H. Dijkema

gives the following

Language of the case: English

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Decision

Summary of the facts

1 By an application filed on 27 August 2012, SINDA POLAND
CORPORATION Sp. z o.o. (the applicant) sought to register the figurative as
amended reproduced below

claiming the colours black and white, for the following goods:
Class 25 Footwear, sports footwear.
2 The application was published on 27 September 2012.
3 On 30 November 2012, PUMA SE (the opponent) filed an opposition
pursuant to Article 41 EUTMR on the ground that the applicants mark would
cause confusion within the meaning of Article 8(1)(b) EUTMR with its
figurative mark, protected in the following three variants,

respectively by International registrations No 369 072 dating back to 1970,

No 593 987 dating back to 1992 and No 480 105 dating back to 1983 and
registered in the Benelux, Czech Republic, Spain, France, Italy, Hungary, Austria,
Portugal, Romania, Slovenia and Slovakia in relation to, among other goods, the
following:
Class 25 Shoes.
The opponent argued that its mark (in any of the three variants) represented, and
was known in trade as, a bounding feline and that the applicants mark was highly
similar thereto because it also represented a feline in a bounding position, with
the front legs raised high above the ground, the rear legs shown as if still touching
the ground and the tail raised at a similar angle with respect to the animals back.
The opponent also observed that the goods were identical and that, as the
Opposition Division had stated in earlier decisions, its mark enjoyed an enhanced

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distinctiveness and even reputation because of extensive use during decades in

the European Union.
4 The applicant was invited to comment on the opposition but failed to do so.
5 By decision of 30 September 2013 (the contested decision), the Opposition
Division rejected the opposition as unfounded on the grounds that, since the
applicants mark was clearly dissimilar to the earlier mark, there could be no
likelihood of confusion even for identical goods. It gave, in particular, the
following grounds for its decision:
The applicants mark represents two or more animals merged into one and
that animal is, in fact, an unidentifiable creature since it has the tail of a
whale, the nose of a dolphin, legs and horns on the head whereas the earlier
mark is readily identifiable as a puma;
The marks do not visually coincide in any element and are therefore
dissimilar; conceptually, the earlier mark represent a puma whereas it is not
clear what the applicants mark represents: some consumers may perceive a
whale, a fish or a dolphin. It follows that the marks are not conceptually
similar because they represent different animals and the mere fact that the
animals leap does not lead to any conceptual similarity; no phonetic
comparison is possible; the marks are overall dissimilar;
The dissimilarity of the marks is sufficient for the opposition to be dismissed;
it is superfluous to compare the goods or to consider the enhanced
distinctiveness of the earlier mark.
6 On 11 November 2013, the opponent appealed the contested decision and
submitted the statement of grounds. The appeal was given the number
R 2214/2013-5 and allocated to the Fifth Board of Appeal. The opponent
requested that the Board annul the decision and reject the contested application
on grounds of likelihood of confusion. The opponent argued that the contested
mark presented obvious similarities to its mark and that the Opposition
Division gave too much importance to the slight differences between them.
The opponent observed the following:
Reasonably observant consumers will not perceive the animal represented in
the applicants mark as a whale or a dolphin because they will see the two
pairs of legs under the animal and the two ears on the head which are typical
of terrestrial animals (aquatic animals do not have legs or protruding ears);
The fact that the mark represents a feline (and not a whale or a dolphin) has
been confirmed by the applicant itself, who, in parallel proceedings pending
in Poland, described the same mark as the representation of a leaping large
cat;
The marks present obvious similarities: the most striking similarity is the
leaping position of the animal; other similarities are the animals rear paws
which still touch the ground, the fact that the front legs are raised, with the
claws under the head, the fact that the tail is lifted at a similar angle, and the
near identical outline of the back and belly;
The differences, including that concerning the direction of the leap, do not
alter an overall impression of similarity for the relevant public when the
respective marks are affixed on the shoes; this is confirmed by pictures (some

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of which are being submitted) of sports shoes that the applicant is already
selling on the marketplace under the offending mark;
Further factors support the existence of likelihood of confusion: first, the
goods are identical; second, the earlier mark enjoys a high degree of
distinctiveness due to extensive use and this has already been recognised by
the Office in several decisions; third, the goods target the general public,
whose attention is average.
7 The applicant was duly notified of the appeal and the statement of grounds but
did not submit observations.
8 By decision dated 14 July 2014, the Fifth Board of Appeal dismissed the
appeal and upheld the contested decision on the ground that the marks were so
dissimilar that no likelihood of confusion could be established. The Board
made the following findings:
The public targeted by the goods (shoes and sport shoes) is the public at
large, who generally display an average level of attentiveness; however, to
the extent that the goods are fashion items or fall into a higher price
bracket, the consumer is likely to be more attentive;
The earlier marks represent a leaping feline and the later mark represents
two or more animals merged in one and that animal is an unidentifiable
creature being the result of assembling the tail of a whale, the legs of a
kangaroo, the horns of a goat, the nose of a dolphin, the eye of a grampus and
the silhouette of a rabbit; the fact that the applicant described the same mark,
in a parallel application, as being the representation of a feline is irrelevant
because what matters is the perception of the mark by relevant consumers,
not the applicant;
From a visual point of view, the signs do not coincide in any element since
(i) they represent different animals, (ii) the animals leap in different
directions and (iii) the animals silhouette in the later mark is thicker than in
the earlier mark; as a result, the marks are visually dissimilar;
Phonetically, the marks are either not comparable or (if they are described
orally) dissimilar; conceptually, the marks are dissimilar, too, because
consumers would not associate them to the same concept and the fact the
animals are leaping does not represent a conceptual similarity since the
marks have several distinguishable features; the conflicting marks are thus
dissimilar overall;
The fact that the marks are dissimilar is sufficient, in accordance with
Article 8(1)(b) EUTMR, for the opposition to be dismissed; the identity of
the goods and the enhanced distinctiveness of the earlier mark may not
outweigh the dissimilarity of the marks.
9 Upon an action (25/02/2016, T-692/14, Device of an unidentifiable animal
leaping to the right (fig.) / Device of an unidentifiable animal leaping to the
left (fig.), EU:T:2016:99) that the opponent brought under Article 65 EUTMR,
the General Court, by a judgment rendered on 25 February 2016 (hereinafter
the judgment), annulled the decision of the Fifth Board on the ground that
Article 8(1)(b) EUTMR has been misapplied. The Court noted two mistakes in
the Boards decision. The first concerned the level of attention of the relevant

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public. The Board had stated that the level of attention was generally average
but also that the public could be more attentive to the extent that the goods
were fashion items or belonged to a higher price bracket (paragraph 20 of the
decision). The Court indicates that the level of attention of the public must be
determined on the basis of the objective characteristics of the goods, not their
price, which is variable (i.e. subjective). The Court thus concluded that since
the products at issue shoes and sports shoes were consumer goods, the
level of attention to be reckoned with in the assessment of likelihood of
confusion was just average (paragraph 25 of the judgment).
10 The second mistake concerned the visual comparison of the signs. The Board
stated that the signs d[id] not coincide in any element and that
[C]onsequently, the conflicting marks [were] visually dissimilar
(paragraph 24 of the decision). The Court notes, firstly, that the conflicting
marks do present similarities since they represent black-coloured images of
animals in a similar leaping position, with their rear feet on the ground, their
front feet under their mouths, their tails lifted at a similar angle and the curve
made by their backs and bellies being undeniably similar. The Court notes,
secondly, that the Board mentioned, in the comparison between the marks,
differences but not similarities and thirdly, that in so doing, the Board
infringed the case-law according to which (i) the perception of the relevant
public is decisive, (ii) the comparison of the marks must be based on the
overall impression they produce on an average consumer, (iii) the consumer
perceives a mark as a whole and does not focus on details, (iv) the consumer
can rarely compare marks directly and must thus rely on imperfect recollection
(paragraphs 34 and 35 of the judgment).
11 On 19 July 2016, the Presidium of the Boards of Appeal allocated the appeal
to the First Board as case R 1304/2016-1.

Reasons
12 As a result of the decision rendered by the Fifth Board being annulled by the
General Court, this Board has to rule again on the appeal and the opposition.
In so doing, the Board shall have to take into account the findings made in the
judgment (Article 65(6) EUTMR). As noted in paragraphs 9 and 10 of this
decision, these findings concern the identification of the relevant public and
the visual comparison of the marks.
13 The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and
49 CTMIR. It is, therefore, admissible. The appeal is also upheld because,
contrary to what the Opposition Division has decided, the opposition is well
founded. The reasons are explained hereunder.
14 The opposition was based on the ground for refusal foreseen in Article 8(1)(b)
EUTMR. The opponent claimed that the applicants mark was very similar to
its own mark and that, since it would furthermore be used in respect of exactly
the same products, a likelihood of confusion within the meaning of
Article 8(1)(b) EUTMR would exist.
15 The subject matter of the opponents three registrations is the same a leaping
animal but represented in three colour variants: in grey on a dark background
(IR No 369 072), in black on a white background (IR No 480 105) and in

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white with a black outline (IR No 593 987). For the purpose of this decision,
only the black variant on a white background (IR No 480 105) will be
considered because it is the variant that comes closest to the colour (black) in
which the applicant has chosen to file the contested mark.
16 In accordance with Article 8(1)(b) EUTMR, a likelihood of confusion requires
that the conflicting marks may be perceived as similar by the relevant public
and that the goods that the marks distinguish are also similar.
On the relevant public
17 The public against whom likelihood of confusion must be assessed is the
public targeted by the goods of the conflicting marks. In the present case, these
goods are footwear (shoes and sports shoes).
18 The opponent stated, in support of the opposition, that the goods were
everyday consumer items and that, for this reason, the assessment of
likelihood of confusion ought to be based on the general public (see point 1.4
of the Statement of Grounds of opposition).
19 The Board notes that the Opposition Division did not comment on this
statement and that, in fact, the contested decision does not contain any analysis
of the relevant public and its level of attention.
20 In the Boards opinion, this omission is a mistake because, according to the
case-law of the Court of Justice The perception of the marks by the average
consumer of the goods and services at issue plays a decisive role in the
assessment of the likelihood of confusion (12/06/2007, C-334/05 P,
Limoncello, EU:C:2007:333, 35). Since the assessment of the similarity of
marks is part of the assessment of the likelihood of confusion, marks should
not be compared without first identifying the relevant public and determining
the level of attention thereof.
21 As footwear are consumer goods, it is the general public, as the opponent
indicated, that must be taken into consideration and the likelihood of
confusion must be assessed on the basis of an average degree of attention (see
the judgment, paragraph 25).
22 According to the certificate that the opponent submitted for IR No 480 105, its
mark is protected in Austria, the Benelux, Germany, France, Italy, among
others. It follows that the relevant public is made of average buyers of
footwear in these Member States.
On the similarity of the goods
23 The opponent argues that the goods covered by the contested mark (footwear,
sports footwear) are identical to the goods (shoes) covered by its earlier right.
The applicant did not object to that argument and the Opposition Division did
not compare the goods.
24 The Board agrees with the opponent: shoes are manifestly included in the
broader definition of footwear and sports footwear.
25 The marks thus cover, in fact, the same goods.
On the similarity of the marks

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26 In accordance with case-law, the assessment of the visual, aural and

conceptual similarity of the marks must be based on the overall impression
made by the marks, bearing in mind their dominant and distinctive elements.
In addition, that assessment must not be made in the abstract but rather from
the perspective of the average member of the relevant public.
a) The visual similarity
27 The opponent argued that the applicants mark represented, like its own mark,
a bounding feline and made the following submissions, at point 1.1 of the
statement of grounds of opposition, in support of its position that the
representations of the animal in the two marks were highly similar:
Both marks represent a feline in a leaping position;
In both marks, the rear paws of the animal are shown as if still touching the
ground;
In both marks, the front legs of the animal are raised and the claws are shown
beneath the mouth;
In both marks, the tail of the animal is lifted at a similar angle with respect to
the back and raises slightly above the height of the head;
In both marks, the curve of the back and of the belly of the animal follows
practically the same line.
28 The General Court found that the conflicting marks represented the black
outline of animals in a similar leaping position, having the rear paws on the
ground, the front paws bent under the mouth and the tail forming a similar
angle with respect to the trunk, the curves of the back and the belly not being
identical but showing undeniable similarities (judgment, paragraph 33). The
Court added that the Fifth Board neglected to consider the existence of these
similarities in its [visual] comparison (judgement, paragraph 34) and annulled
the Boards decision for, among others, this reason.
29 As a result of the annulment of that decision, the First Board has to reassess
the visual similarity of the marks and, in so doing, has to take into
consideration the elements of similarity noted by the Court.
30 In the Boards estimation, the applicants and the opponents marks do present
similarities that may visually strike an average consumer of footwear who, in
accordance with case-law, perceives marks as wholes, does not necessarily see
them at the same time in normal trade circumstances and has an imperfect
recollection.
31 The first visual element of similarity is the fact that both marks represent a
black animal on a white background. Another element of similarity is that the
animal is not represented in detail but by means of its outline. A further
element of similarity is the perspective from which the animal is shown: a
lateral perspective in both cases. Another element of similarity is the position
of the animal: the animal is shown leaping. In addition, the leaping position is
identical: the rear paws seem to still touch the ground whereas the front paws
are already in the air. Furthermore, in both cases, the front paws are shown just
beneath the mouth and have a curved appearance while the tail, which has a
similar length, is raised at an almost 90 angle with respect to the line of the

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back. Another element of similarity is the aspect of the back and of the belly of
the animal in the two marks. A further element of similarity is that both
animals are broadly shaped as a feline: the body tends to be slender and long,
the leaping position is typical of that of a cat, a tiger or similar animals, the
long tail is also typical of felines.
32 A visual comparison cannot be complete without also reviewing elements of
dissimilarity. In general terms, the drawing in the applicants mark is less
realistic than that of the earlier mark. A second element of dissimilarity is the
representation of the tail, which is double-ended in the applicants mark. A
third element of dissimilarity is the drawing of the animals ears, which are
longer in the applicants mark. A fourth element of dissimilarity is the
representation, in the later mark, of the two pairs of front and rear legs created
by a white shadowy effect between them (cited as the first element of
dissimilarity). A fifth element of dissimilarity is the direction of the leap.
33 In accordance with the Courts judgement (judgement, paragraph 34), the
outcome of a visual comparison must be based on a balance between similar
and dissimilar elements. It is clear to the Board that the former (similar)
elements largely outweigh the latter in the present case. The average consumer
will retain as regards the two marks the overall visual impression of a
black leaping animal resembling a feline and will not necessarily identify
those details that distinguish the representation of the animals in the two marks
or the exact direction in which they are leaping.
34 Contrary to the Opposition Divisions findings, it is therefore likelier that
reasonably observant consumers will identify, in the applicants mark, a feline
albeit less true to life rather than one or more imaginary aquatic or
terrestrial animals.
35 The fact that the applicants mark represents, albeit less true to life, a feline
has furthermore been confirmed by the manner in which, according to
documents submitted by the opponent, the applicant described the same mark
in parallel trade mark proceedings pending in Poland as the representation of
a large leaping cat (see opponents letter of 29 January 2014). Clearly, such a
description shows that the applicant intended to represent a bounding feline.
For all the reasons indicated, it is reasonable to assume that the public will
perceive the mark as a leaping feline.
36 It follows that, for all the reasons stated, the applicants mark must be
considered as visually similar to the earlier mark. However, that similarity
must be rated, in view of the aforementioned elements of dissimilarity, as
average rather than high, contrary to the opponents opinion.
b) The aural similarity
37 Neither the opponent nor the applicant made submissions as regards an aural
comparison of the marks, presumably because given that the marks are purely
figurative, they would not be uttered by consumers.
38 The Opposition Division stated in the decision that as both signs are purely
figurative, it is not possible to compare them aurally.
39 The Board endorses this statement. Comparing the purely figurative marks
aurally, without arguments from the parties and/or without elements in the file

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showing how the relevant public pronounces the images, is a speculative

exercise which is unlikely to yield reliable results.
c) The conceptual similarity
40 What has been said under the section The visual similarity is valid, mutatis
mutandis since images (just like words) may translate into concepts. In the
present case, the concept expressed by both marks is that of a leaping feline.
The precise manner in which this concept is graphically represented differs, of
course, as mentioned in the section on the visual comparison but the elements
of conceptual similarity largely outweigh, in the Boards opinion, those
elements of dissimilarity. In the consumers imperfect recollection, the two
signs will leave the same, or a very similar, conceptual impression: a leaping
feline. Therefore, the conceptual similarity is very high.
d) Global similarity
41 The applicants mark has an average degree of visual similarity with the earlier
mark. The conceptual similarity is very high.
42 The marks may thus be considered to be globally similar to a more than
average degree.
On the overall assessment of likelihood of confusion
43 In accordance with the Boards assessment in the present case, all the relevant
factors lead to a finding of likelihood of confusion.
44 Firstly, the goods at issue are identical. Secondly, the marks are similar,
moreover globally to a higher-than-average degree. Thirdly, the degree of
attentiveness of the relevant consumer is average. In this regard, it must be
noted that in ordinary trade circumstances buyers of shoes including sports
shoes will not necessarily have the possibility to see the goods bearing the
conflicting marks side by side and will, therefore, have to rely on their
imperfect recollection.
45 It follows that these consumers may actually confuse the two marks and
therefore the contested application must be rejected in accordance with
Article 8(1)(b) EUTMR.

Costs
46 The applicant, being the losing party within the meaning of Article 85
EUTMR, shall be order to bear the opponents costs and fees in the opposition
and appeal proceedings, namely: EUR 350 and 800 as fees and EUR 300 and
550 as costs for professional representation (Rule 94 CTMIR).

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Order
On those grounds,

THE BOARD

hereby:
1. Annuls the contested decision;
2. Upholds the opposition and accordingly rejects the EUTM application
for all the goods;
3. Orders the applicant to reimburse EUR 2 000 to the opponent.

Signed Signed Signed

Th. M. Margellos C. Rusconi Ph. von Kapff

Registrar:

Signed

H.Dijkema

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