Trademark Caselaw | Chile | NUMA and PUMA Set to Coexist
Earlier this year, the Supreme Court rejected Puma SE’s final bid for the annulment of trademark registration No. 1202835 for NUMA, in classes 9 and 25, held by Numa Tactical LLC.
Numa Tactical LLC filed a multiclass application in classes 9, 18 and 25, which was opposed by Puma SE, on July 30, 2013, based on multiple pre-existing registrations for its trademarks PUMA and PUMA (Logo), in its different versions. At the time, INAPI, Chile’s patent and trademark office rejected Puma SE’s opposition and issued an ex officio partial rejection of the proposed mark in connection with the goods included in class 18, while granting the registration for the goods included in classes 9 and 25. Puma SE appealed.
Puma SE based its case on pre-existing registrations for trademark PUMA and PUMA (Logo), in its different versions, including the one depicted in the image.
After the Industrial Property Court rejected its appeal, Puma SE sought the annulment of the subject registration and found itself again, not only with a rejected appeal from the subject court, which led to an additional attempt at the Appeals Court during 2019. The Appeals Court also ruled in favor of maintaining INAPI’s initial grant and agreed with the initial ruling that there was no likelihood of confusion between trademarks NUMA and PUMA, further stating that the sole substitution of letter “P” for letter “N” was enough for both marks to maintain their own features and identity, also highlighting the fact that NUMA had no specific meaning while PUMA did have a specific meaning, which was further reinforced by the logos depicting the animal.
Puma SE’s final attempt at the annulment of the subject registration was in the form of a cassation appeal, filed with the Supreme Court, arguing that the Appeals Court failed to attend to factual and logical reasons that would have, otherwise, resulted in the sought annulment and that the judges where not thorough enough in examining the evidence of the case, while also arguing that the appeal ruling was wrong in its examination of trademark NUMA, by failing to attend to the specific nature, use and commercialization channels for the goods identified with each mark, and its similarity with trademark PUMA. It would have been the fifth time the comparison between trademarks NUMA and PUMA (and different versions of its logo) would have been subject to analysis, after the case had gone twice through INAPI and the Industrial Property Court, and once through the Appeals Court.
However, in its ruling of January 5, 2021, the Supreme Court found that the appeal for cassation was not an instance per sé and that its purpose was not to re-examine facts that had been previously established on trial. It also found that Puma SE failed to demonstrate that the appealed ruling had infringed upon the applicable law in establishing the facts, and that it merely sought to substitute the judges’ opinion for one that would benefit its interests through a new review of the material aspects of the controversy, which fell out of the scope of an appeal for cassation.
The Supreme Court’s ruling puts and end to a trademarks controversy that stretched for almost seven years.
Click here to request a copy of Supreme Court’s decision or in case you wish any additional information.
