Market Court: no risk of confusion between PUMA and RUMA

• Puma SE opposed the registration of the figurative mark RUMA in Class 25 based on its earlier EU trademark PUMA, also in Class 25
• The court found that the market research surveys conducted by Puma in other countries failed to demonstrate the reputation of its mark in Finland
• Although the marks were somewhat similar in appearance, they differed from a phonetic and conceptual point of view
   

In a judgment of 27 December 2019 (MAO:563/19), the Market Court of Finland considered the likelihood of confusion between the figurative marks PUMA and RUMA (depicted below), and whether the Finnish word ‘ruma’ (‘ugly’) is descriptive for clothes.

Background

Puma SE opposed the registration of the Finnish trademark RUMA, claiming that the mark was confusingly similar to Puma’s earlier EU trademark (EUTM) for PUMA, registered in 2014. Both marks covered identical goods in Class 25.

Puma also argued that the contested mark consisted exclusively of the word ‘ruma’, which is an adjective describing the quality and external appearance of the goods. Thus, the mark lacked distinctiveness. In addition, Puma argued that PUMA has a reputation among consumers and submitted foreign market studies in support of its claim.

The Finnish Trademark Office rejected the opposition and Puma appealed to the Market Court.

Decision

First, the court assessed the distinctiveness of the mark RUMA. According to the court, the goods covered by the mark in Class 25 are aimed at the general public, which consists of average consumers who are reasonably well informed and reasonably observant and circumspect. The court stated that the relevant public understands the word ‘ruma’ as meaning ‘ugly’, despite the fact that the first letter of the mark is the letter ‘R’ in reverse.

The characteristic described by the mark, namely ugliness, was not, per se, an objective characteristic related to the inherent quality of the goods at issue. It was irrelevant that these goods might be considered ugly, since this depended on a personal, subjective appraisal, and the average consumer did not perceive the mark RUMA as describing the quality of goods in question. Consequently, the mark could not be regarded as being devoid of any distinctive character on that basis.  

Moreover, since the meaning of the word would be perceived as negative, the mark was not laudatory and “cannot be considered to be devoid of any distinctive character on that basis either”. For this reason, the court had to review the issue of the likelihood of confusion between the marks.

The court found that the market research reports conducted in France, Germany, Italy and the Netherlands were insufficient to demonstrate the reputation of the EUTM PUMA in Finland. Although the reports might indicate that the PUMA logo is well known in these countries, no conclusions could be drawn for Finland. In the absence of any other evidence to support PUMA’s alleged reputation, the court stated that the trademark PUMA “cannot be considered to be any more distinctive than average for the goods in question”.

The court further found that the marks were somewhat similar in appearance, but differed from a phonetic and conceptual point of view. The court emphasised that, although the level of attention of the target audience is not particularly high, the relevant public pays attention to conceptual differences. Given that the marks are relatively short and that, as a general rule, the relevant public pays more attention to the beginning the marks (which was different here), the court considered that the marks as a whole were so different that, despite the identical nature of the goods covered by the marks, there was no likelihood of confusion between them.

The Market Court thus dismissed the appeal in its entirety.

It remains to be seen whether Puma will file a request for leave to appeal to the Supreme Administrative Court of Finland.