Klinsmann – Panini: 2-1

When Jürgen Klinsmann seeks trademark protection of a silhouette image of his bicycle kick in the match against Bayern Munich for print, clothing and beverages, Panini objects.

 

Panini has been using a three-dimensional image of a "flying soccer player" as a trademark logo for the sale of its soccer pictures and -albums for years. But are the two images similar?


EUIPO initially says so, but Klinsmann wins at the Board of Appeal. The Klinsmann logo is abstract so that it is not clear if an arm or leg is shown. Is this a handball player or a football player? The result: the trademarks are visually nor conceptually similar.

Additionally, the Board of Appeal emphasizes that "descriptive" logos (referring logo) offer limited protection (the image of a soccer player for soccer pictures or sportswear). If you want to claim broad protection for your logo, choose a more distinctive image. (Source image: EUIPO online database)

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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?