On 14 April 2021 the Supreme Administrative Court held that there was a likelihood of confusion between an earlier figurative mark, PUMA, and the contested trademark RUMA.(1) The Finnish Patent and Registration Office and the Market Court had previously reached a contrary conclusion.
The case involved a conflict concerning the Finnish word mark RUMA (meaning 'ugly' in Finnish) and the prior PUMA figurative marks, written in stylised text. It was undisputed that the goods covered by the marks in Class 25 (clothing) and Class 28 (sporting articles) were identical. Thus, the only remaining issue was whether the difference in the initial letter of each word was sufficient to distinguish the marks.
Finnish Patent and Registration Office and Market Court decisions
Both the Finnish Patent and Registration Office and the Market Court held that there was no likelihood of confusion between the marks. According to the Market Court, the conflicting marks were visually similar but differed phonetically and, in particular, conceptually. Although the level of attention of the relevant public was not particularly high, the Market Court determined that the relevant public paid particular attention to conceptual differences.
Supreme Administrative Court decision
The Supreme Administrative Court agreed that the marks were visually similar despite the shortness of the signs and the difference in their first letters. The Supreme Administrative Court also noted that the letters P and R were similar in appearance. However, the Supreme Administrative Court questioned how the relevant public would perceive the meaning of the PUMA mark and whether it would generally be pronounced as 'puuma' (Finnish for 'cougar') due to its meaning in Swedish and English.
Throughout the process, the owner of the PUMA trademarks claimed that PUMA was one of the most highly reputed trademarks in the world in its line of business and that this enhanced the marks' distinctive character. However, the owner provided no evidence in support of the trademarks' reputation, particularly in Finland.
The Supreme Administrative Court held that there were no grounds to consider the PUMA marks to be weak in terms of distinctiveness and scope of protection and that even if the meaning of the PUMA sign was perceived as 'cougar', it did not describe the goods in Classes 25 or 28 in a way that was detrimental to its distinctive character. Consequently, the PUMA marks were considered to have a strong scope of protection, despite the lack of evidence of their reputation in Finland.
The Supreme Administrative Court noted that the goods in question (ie, clothing and sporting articles) were often sold in shops and online stores where it is easy to compare goods from different manufacturers side by side. Emphasis was thus placed on the similarity of the visual appearance of the signs and the similarity of the goods. Further, the average consumer could be expected to pay less attention to the pronunciation and conceptual meaning of the signs in such sales situations. Therefore, the signs were considered to be confusingly similar.
Interestingly, although the owner of the PUMA trademarks presented no evidence for the reputation of the marks in Finland, the court considered them to have a strong distinctive character and scope of protection. This was justified only by the fact that there were no grounds for considering the marks to be weak; in practice, the signs did not describe the goods covered by them in a way which would impair their distinctive character. Given the peculiarity of the arguments which supported the strong distinctive character and scope of protection of the PUMA marks, it would appear that their reputation may have affected the assessment even in the absence of evidence concerning their reputation in Finland.
This case also exemplifies how various factors may affect the assessment of a likelihood of confusion, depending on the facts of the case. Although the signs PUMA and RUMA differed conceptually, greater weight was given to the visual similarity of the marks due to the nature of the products and the manner in which consumers compared them. Further, in light of the outcome, even though the comparison of goods was deemed to be easy, the court did not seem to consider that this might reduce the likelihood of confusion.
Concurrent decision on figurative mark
An interesting detail which may shed some light on this decision is that the same applicant had also applied for the figurative mark RUMA (specifically, 'Яuma') in Class 25 for footwear, headgear and clothing (Figure 1).
Figure 1: figurative RUMA mark
The Supreme Administrative Court issued a decision in both cases on the same day. The outcome and the reasoning for this decision were essentially the same as in the word mark decision, such that the figurative mark in question was considered to create a likelihood of confusion with the earlier PUMA marks. Taken together, these decisions shed light on the position of the Supreme Administrative Court in such circumstances.
Endnotes
(1) For further information please see the Supreme Administrative Court website.
