was different to this:
Fairly obvious, you might think – the first trade mark (registered by German sportswear manufacturer Puma) shows a somewhat abstract puma leaping in silhouette to the left; the second (Dutch clothing retailer Sabel) shows a rather more realistic cheetah, depicted in 3D, loping along to the right. Clearly different.
But Puma’s main concern was that it shouldn’t have to tolerate another “big cat” brand competing with its leisurewear products and argued that the relevant consumer might confuse the two or assume one was a sub-brand of the other or something. In what has become a classic trade mark judgment, the ECJ laid down this test for infringement:
what is the overall impression given by the marks, bearing in mind their distinctive and dominant components and taking into account the following 3 factors:
- visual similarity (do the marks look the same?)
- aural similarity (do the marks sound the same?)
- semantic similarity (do the marks mean the same?)
Sabel’s proposed mark clearly looked and sounded nothing like Puma's which just left the question of the marks’ respective conceptual content, and on this the ECJ ruled they were sufficiently different that they should be allowed to coexist. The trainer-buying public could be trusted to tell pumas from cheetahs.
Even thought it lost, Puma clearly enjoyed the whole litigation experience, because it’s back for more – this time in the German courts, taking on Pudel, a small Hamburg-based t-shirt designer. Pudel (“poodle”) registered this mark for clothing about 10 years ago:
Puma took a while to object, but since then has taken Pudel all the way to the Bundesgerichtshof (the German Supreme Court). The BGH held that held that although there were obvious differences, the 2 trade marks were indeed similar “in a trade mark sense” - not to the extent that anyone was likely to confuse them, but enough that Pudel’s mark took unfair advantage of Puma’s distinctive character and repute. Pudel was profiting from the marks’ similarity and was unfairly gaining attention for its products because consumers would create a mental link with the well-known PUMA mark. Pudel tried to argue that its mark was clearly a parody, or that it was a case of human rights and freedom of expression. The BGH acknowledged both these rights but ruled that Pudel could not rely on them to override the reputation of Puma’s trade mark.
Trade mark law is largely similar across the EU, so this judgment will be relevant to UK or Community trade marks as well. It demonstrates the benefits of being able to show your trade mark has a “reputation” – this effectively allows a trade mark to “power up” and take advantage of a whole new set of enforcement opportunities in the shape of e.g. s.5(3) or s.10(3) Trade Marks Act. These opportunities are substantial – not least the fact that you don’t have to worry about proving any element of confusion – so it will often be worth considering whether your mark qualifies.
What does a trade mark have to do to show that it has a reputation? It certainly doesn’t have to be a household name; nor does it have to be a “well-known mark” (a related but separate legal concept). Any mark which is “known to a significant part of the relevant public” will do but, as you can imagine, there can be a great deal of evidence and argument needed to establish the facts.
Pudel lost the first round to Puma and then went on to bring and lose two appeals. All Brandsoup can say is we salute their dogged attitude to trade mark litigation!
