In October 2020, Luca Gottardo Li Puma filed an application with the European Union Intellectual Property Office (EUIPO) to register the trademark “LaZZarO by Li Puma,” covering, among other things, services in Class 40, such as recycling, waste processing, and consulting on material recovery. Although relatively unknown in the fashion industry, the new trademark immediately attracted the attention of Puma SE, which, citing its well-established trademarks in Class 25, filed an opposition. The company argued that the new trademark could dilute the reputation of its brand, create a risk of unfair exploitation of Puma’s reputation, and mislead consumers about the origin of products and services. It is worth noting that disputes concerning so-called “renowned trademarks” in the European Union have a special legal dimension. The law protects them not only against the risk of direct confusion but also against actions that could weaken their value or reputation, even if the products and services belong to different categories. Therefore, each case is analyzed very carefully, taking into account many aspects, such as the similarity of the trademarks, the scope of services, and the perception of the average consumer.
The first stage of the dispute was a proceeding before the Opposition Division of the EUIPO, which rejected Puma SE's opposition in 2022. This decision was not final – the sportswear brand appealed to the EUIPO's Board of Appeal, hoping to reverse the ruling. The Board of Appeal, after analyzing the arguments, upheld the decision of the Opposition Division in October 2023, stating that there was no significant similarity between the marks, and the differences in the target groups and the nature of the services ruled out the risk of weakening Puma's reputation. Puma SE decided to continue the dispute and appealed to the Court of Justice of the European Union, emphasizing the importance of protecting its trademark throughout the European Union. The court's analysis focused on several key elements: the visual and phonetic similarity of the marks was assessed, it was checked whether consumers could associate the new mark with the well-known brand, and the differences in the target groups and the industries in which the individual entities operated were also taken into account.
The Court of Justice of the European Union fully upheld the EUIPO’s decision, stating that the dominant element of the new trademark is the word “Lazzaro,” while the phrase “by Li Puma” does not create an association with the sportswear brand. According to the Court, the reference to a natural person, Li Puma, differs significantly from the trademark of a renowned brand and does not pose a risk of association in the mind of the average consumer. Furthermore, the Court pointed out the nature of the services offered – recycling and consulting in the field of material recovery are aimed at a narrow group of business clients, while Puma’s products are targeted at a broad group of consumers interested in sportswear and footwear. The lack of overlap in target groups means that the average consumer will not perceive the new services as being related to the Puma brand. The Court also emphasized that the mere fact that a brand is well-known does not automatically provide protection against the registration of similar trademarks in other industries. What matters is an assessment of the actual risk of diluting the brand’s reputation and the likelihood that consumers will mistakenly associate the new products with the existing brand.
The ruling of the Court of Justice of the European Union is an important signal for entrepreneurs, designers, and lawyers. It shows that the protection of a well-known trademark is not absolute and must be assessed in the context of a specific market, the type of products and services, and the target group of consumers. New trademark applications in completely different sectors may be entirely legal, even if they contain elements similar to existing brands. This decision also emphasizes the importance of careful analysis before applying for a new trademark. Entrepreneurs should consider not only the visual or phonetic aspects but also the industry in which they intend to operate, the nature of the services offered, and the potential reactions of well-known brands. The judgment in the "LaZZarO by Li Puma" case may serve as a reference point in future disputes, providing valuable guidance on how to assess the risk of conflict with existing trademarks with established reputations.
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