Felines jumping from OHIM to General Court: puma and designs
On 27 March 2007, Danuta Budziewska applied for the following Community design for “logos” in Class 32, which was registered on 2 May 2007. On 26 February 2009, Puma AG Rudolf Dassler Sport filed an Invalidity application claiming 1) lack of novelty, 2) lack of individual character and 3) unauthorized use of distinctive sign according to Article 25 (1) (e) of the Community Design Regulation, based on an earlier international right published in 1970 in the Official Journal of International Trade Marks, highlighting that common characteristics shared by the felines including its “tail up ”.
The Cancellation Division (CD) declared the contested RCD invalid due to its lack of individual character, finding the overall impression to be considerably the same, applying article 6 of the CDR which provides that “a design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public”. The Third Board of Appeal upheld the CD’s decision. First it held that the international trade mark of Puma constituted a disclosed design within the meaning of Article 7 (1) CDR which the applicant did not dispute.
Secondly, stating that logos have various different uses, it defined the informed user of logos as being anyone: an entrepreneur, a manufacturer, a retailer, a bank, a public entity, an artist, a political party, etc. Since the earlier right has been disclosed, among others, for the clothing sector and sports material, the overall impression on the informed user must be taken into consideration for said sector.
Thirdly, according to Article 6 (2) CDR, in assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration. In the case of logos for clothing and sports material, the degree of freedom is very broad. It is well-know that there are numerous kinds of logos in different colors, shapes, styles, and the RCD’s applicant could have chosen a design further away from the representation of the earlier one.
Fourthly, the overall impression is very similar since both designs have numerous aspects in common:
- They both represent a feline
- a jumping feline
- The feline is turned facing towards the left
- The tail is up
- The background is dark; the animal is represented in a light colour
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| Undefined jumping animals? |
The Board rejected the arguments of the applicant that there were considerable differences, namely the contested RCD consists of “a poorly designed jumping animal, its kind being difficult to determine” which could be a “dog, cat, or undefined animal” [Merpel adds the contested design is clearly a cave drawing of a cat following a laser beam] whereas the earlier design is a “jumping puma sideways, representing the idea of elegance and concentrated precision” [obviously jumping after its gazelle pray].
Furthermore, the Board concluded the differences are irrelevant since they concern small details of the designs such as the nose/ eyes, legs (2 instead of one), tail (arched up or down) and ears.
In its appeal before the General Court (case T-666/11), the applicant claimed that there were substantial differences since “the puma was in the impulse phase”, whereas in the contested RCD, “the domestic cat was in the landing phase falling back on its paws- as the proverb goes”. This landing phase was highlighted by the fact the tail was up to direct the body and prevent it from falling when it lands.
However, the General Court, in addition to rejecting the unsubstantiated claim that the Board assessed the designs like trademarks, rejected the claim, finding that whether it was a domestic cat or wild puma, the overall impression produced was in any event that of a feline. This emerges, in particular, from the slender and flexible, as well as predator dynamics of the representation of the animal. Secondly, the claim that the felines would be in different jumping phases is not valid since landing felines would touch the ground first with its front legs, and not back legs [which everyone knows, not just cat-loving IP practitioners]. Thus, the overall impression is the same, namely of a jumping feline
