On 14 April 2021 the Finnish Supreme Administrative Court (“the Supreme Court”) held that there was likelihood of confusion between an earlier mark PUMA (figurative mark) and the contested trademark RUMA. The Finnish Patent and Registration Office and the Finnish Market Court had previously reached a contrary conclusion.
Factual and Legal Background
The case involved a conflict between the Finnish word mark RUMA (meaning ‘ugly’ in Finnish), and the prior PUMA figurative marks written in stylized 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 these marks.
Both the Finnish Patent and Registration Office and the Finnish 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 is not particularly high, the Market Court determined that the relevant public pays particular attention to conceptual differences.
The Finnish Supreme Administrative Court Decision
The Supreme Court agreed that the marks were visually similar despite the shortness of the signs and the difference in the first letters. The Supreme Court also noted that the letters P and R are similar in appearance. The Supreme Court, however, 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 Swedish and English meaning.
Throughout the process, the owner of the PUMA trademarks also claimed that PUMA is one of the most highly reputed trademarks in the world in its line of business, and that this enhances the distinctive character of the marks. However, no evidence was provided in support of its reputation particularly in Finland.
The Supreme 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 sign PUMA was perceived as cougar, it does not describe the goods in classes 25 or 28 in a way that is detrimental to 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.
In addition, the Supreme Court noted that the goods in question, e.g., clothing and sporting articles, are 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 on the similarity of the goods. On the other hand, the average consumer can be expected to give less attention to the pronunciation and conceptual meaning of the signs in such sales situations. Therefore, the signs were considered to be confusingly similar.
Conclusions
Interestingly, although no evidence had been presented for the reputation of the PUMA marks in Finland, they were considered to have 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, that is to say, in practice, that the signs do not describe the goods covered by them in a way which would impair their distinctive character. Given the peculiarity of the arguments supporting the strong distinctive character and scope of protection of the PUMA marks, it would appear that the reputation of those marks may have affected the assessment even in the absence of evidence concerning the reputation in Finland.
This is also an example of how various factors may affect the assessment of the likelihood of confusion, depending on the particulars of the case. Although the signs PUMA and RUMA differ conceptually, greater weight was given to the visual similarity of the marks given the nature of the products and the manner in which consumers compare them. Furthermore, 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.
A link to the Finnish language decision is here:
(https://www.kho.fi/fi/index/paatokset/vuosikirjapaatokset/1618212299813.html
Epilogue: Concurrent Decision on Figurative Mark
An interesting detail, which may shed some light on the decision discussed above, is that the same applicant had also applied for the figurative mark 'Ruma' (more specifically, 'Яuma') in Class 25 for Footwear; Headgear; Clothing:
The Supreme Court noted that the goods in question, e.g., clothing and sporting articles, are 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 on the similarity of the goods. In addition, the average consumer can be expected to give less attention to the pronunciation and conceptual meaning of the signs in such sales situations. Therefore, the signs were considered to be confusingly similar.
The authors of the blog, our experts Johanna Säteri and Jenni Ihalainen, will be happy to answer any questions you may have about the topic.