Federal Court of Justice strengthens brand protection: “Puma“ vs “Pudel“
In its judgement of 02 April 2015 (I ZR 59/13) the German Federal Court of Justice (BGH) decided a trademark dispute between the manufacturer of sports equipment Puma and a t-shirt designer from Hamburg. The plaintiff is the owner of the German word-figurative-trademark consisting of the word “Puma” and the image of a “leaping wild cat”. The defendant registered a trademark of the word “Pudel” (meaning poodle) and the image of a “leaping poodle”. The plaintiff, whose trademark is famous around the world, sought the invalidation of the defendant’s trademark.
The BGH took the view that the competing signs – although being similar – are not similar enough to assume a likelihood of confusion as per Sec. 9 (1)(2) of the German Trademark Act (MarkenG). However, the similarity of the signs is sufficient for the trademark of the defendant to receive an increased attention that it would not receive otherwise. Hence the defendant takes advantage of the distinctive character and the repute of the “Puma”-trademark as per Sec. 9 (1)(3) MarkenG, giving the plaintiff the right to demand the invalidation of the “Pudel”-trademark.
This result is not altered by the fact that the defendant’s trademark is a parody of the Puma trademark. The BGH makes clear that the property right of the plaintiff in its long-established trademark in such case must be valued higher than the freedom of speech or the artistic freedom of the defendant.