Puma runs to victory in sports shoe case

Argentina
In Puma AG Rudolf Dassler Sport v Cueros del Norte SRL (Case 14414/2003, March 27 2009), the Federal Civil and Commercial Court of Appeals of the City of Buenos Aires has ordered that Cueros del Norte SRL cease using Puma AG Rudolf Dassler Sport's 'inverted pipe' design for sports shoes.
 
Puma owns a trademark consisting of an inverted pipe for goods in Class 25 of the Nice Classification (sports shoes). Puma brought suit against Cueros, seeking an order that the latter cease using a design consisting of an inverted pipe for sports shoes. Cueros's design had an additional stripe that ran from the broader portion of the pipe to the back of the shoe. Puma also claimed damages for the unauthorized use of the design. 
 
The first instance court held that the designs at issue were different and dismissed the case. On appeal, the Court of Appeals reversed the decision of the lower court.
 
First, the Court of Appeals held that Cueros had copied the inverted pipe design, and that this had not happened "by chance". The only difference with Puma's design was the additional stripe in the lower area of the sport shoe. However, the court found that this stripe was not very visible and, therefore, was not distinctive. 
 
The court concluded that Puma’s trademark rights had been infringed, as the design used by Cueros incorporated the registered mark in its entirety and the added element lacked originality.
 
Further, the court pointed out that sports shoe manufacturers invest large amounts of money to advertise their brands and that certain device marks have become well known worldwide (eg, Nike's swoosh, adidas's three stripes and Puma's inverted pipe).
 
The court further held that well-known marks must enjoy broad protection. Infringement of well-known marks causes damages in two ways: loss of sales and dilution. The court stressed that the difficulty in proving damages should not provide impunity to infringers; therefore, the existence of damages should be presumed.
 
Taking into account a range of factors, the court awarded damages in the amount of Ps30,000 (approximately $8,000) to Puma.
 
Puma had also requested that the infringing goods be destroyed. The court decided that the parties should consider the possibility of donating the shoes to a charitable organization. The court stated that the goods should be destroyed only if the parties failed to reach agreement.  
 
Finally, the court ordered that the decision (or a summary thereof) be published in a newspaper of broad readership.
 
Fernando Noetinger, Noetinger & Armando, Buenos Aires

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