Dogged pursuit of a trade mark parody: PUMA v PUDEL in the Bundesgerichtshof

The German Federal Supreme Court (Bundesgerichtshof) recently had to decide on the legality of a trade mark parody that 'in its overall impression' was based on an earlier well-known trade mark; (decision of 2 April 2015 - I ZR 59/13 - Springender Pudel).

The oriignal

The claimant was the leading sports article manufacturer Puma, who owns the well-known German word-device trade mark for the word element "PUMA" combined with the outline of a jumping puma. The sign is used on sports wear. The defendant was the owner of the younger German word device trade mark registration for the word element "PUDEL" (English: poodle) and the outline of a jumping poodle, which had been registered since early 2006 for clothing and t-shirts, among other goods. 

Puma was not impressed by this "parody" and regarded the PUDEL trade mark registration as an infringement of its earlier PUMA mark.  Both, the first instance court and the court of appeal agreed with Puma and ordered the defendant to agree to the cancellation of its PUDEL trade mark registration. On further appeal by the defendant, the Bundesgerichtshof has now again decided in Puma's favour.

The Bundesgerichthof held that, despite obvious differences, the trade marks were similar in a trade mark sense. Whilst the similarity was not to such an extent that there was a likelihood of confusion in the sense of § 9(1) No. 2 German Trade Mark Act, the defendant nonetheless took unfair advantage of the distinctive character and repute of the earlier "PUMA" trade mark in the sense of  § 9(1) No. 3 German Trade Mark Act. 

The judges found that the defendant was profiting from the similarity of both trade marks and gained attention for its products it would otherwise not have been been able to attract.  The owner of a well-known PUMA trade mark could therefore ask for the cancellation of the conflicting trade mark even if there was no likelihood of confusion but where the degree of similarity between both marks was such that consumers would create a mental link between both marks.  

The defendant was also unable to successfully avail itself of the defence of the basic human right of freedom of art, as protected by Article 5(3) German Basic Law, or the basic human right of freedom of expression, as protected by Article 5(1) German Basic Law.  The court explained that both rights had to yield to the trade mark rights of the owner of the well-known trade mark, which are equally protected by the German Basic Law, Germany's constitution. Notably, the protection of the defendant's freedom of art and freedom of expression did not encompass the right to register a trade mark for similar or identical goods.

The Bundesgerichtshof's press release for this case can be found here (in German).