The PUMA sports brand has been widely used and promoted in China. But another party registered the similar mark “sweet puma” (Reg. No. 19051535) in Class 43 for catering service, bar services, restaurant services and similar. PUMA applied to invalidate the registration on the grounds (1) that its series of PUMA marks enjoyed a high degree of recognition and reputation in China and, as such, should be officially recognized as a “well-known” trade mark, (2) that the disputed mark was a malicious imitation of the PUMA brand, and (3) that registration and use of the disputed mark would cause confusion bring about negative social influence. PUMA lodged extensive evidential materials in support of its case.
Disputed Mark Reg. No. 19051535
PUMA’ s earlier marks IR No. 582886 and China Reg. No. 76554
After due consideration, the CNIPA decided to maintain the “sweet puma” registration because PUMA’s earlier registrations only covered sporting goods that are remote from the restaurant and bar services covered by the disputed mark. The evidence did not persuade the Examiner that the use of the disputed mark for its designated services would cause confusion.
PUMA appealed the CNIPA decision to the Beijing IP Court. In its appeal, PUMA insisted that its PUMA trade mark should be officially recognized as a “well-known” trade mark, which would mean that the mark would be afforded protection beyond its registered goods/classes. It contended that the disputed mark should be invalidated under Article 13.3 of the China Trade Mark Law. [i.e. the mark was a reproduction or imitation of a third party's well-known trademark that has been registered in China for different or other types of goods, which may mislead the public and damage the interests of the registrant of the well-known trademark]. Such a mark is prohibited from registration.
The Beijing IP Court rejected PUMA’ s appeal and maintained the “sweet puma” registration. It decided that the respective marks are used in quite distinct and unrelated business areas and, consequently, the general public was unlikely to associate the disputed mark with PUMA and its business.
PUMA filed a further appeal to the Beijing People’s High Court. It submitted additional evidence demonstrating the broad extent of its business operations with its commercial partners. PUMA also noted and asserted that the owner of the disputed mark had been deregistered on 3 September 2021.
In its judgement, the High Court determined that (i) the PUMA trade mark should be accorded recognition as a “well-known” trade mark, (ii) the disputed mark “sweet puma” is similar to the PUMA trade mark, and (iii) while the catering/restaurant services, etc. covered by the registration at issue are different from PUMA’ s sporting goods, there could be an overlap or connection as a result of promotion and advertising activities such that consumers might associate the disputed mark with PUMA or its business. Thus, the High Court overruled the decisions of both the CNIPA and Beijing IP Court.
While this case could suggest that the court in China may be amenable to according “well-known” status (and the resultant broader protection) to a trade mark, upon provision of detailed evidence demonstrating very extensive use and promotion of the mark in China, it is should not be overlooked that owner of the disputed registration itself became deregistered during the litigation process and this fact may also have weighed on the decision reached by the high court.