Device mark injunction application kicked out by High Court

In Puma AG Rudolf Dassler Sport v Global Warming (Pty) Limited (Case 1546/2002, March 14 2007), the Cape of Good Hope Provincial Division of the High Court of South Africa has dismissed Puma AG Rudolf Dassler Sport's application for an injunction against local manufacturer and distributor Global Warming (Pty) Limited preventing its use of a device mark device mark on its sports shoes. Puma claimed that Global Warming's device infringed its rights in its 'Form Strip' device marks.

In addition to the injunction, Puma sought payment of a reasonable royalty by Global Warming, because of its infringement, in terms of the provisions of Section 34(3)(d) of the Trademarks Act in the amount of 10% of its gross sales over the relevant period.

Global Warming denied that its trademark was confusingly similar to the 'Form Strip' device and further argued that its footwear also bore the trademarks DT NEW YORK or DTNY (or DOWN TOWN NEW YORK).

In dismissing the action and refusing any relief, the court concluded that there were significant distinguishing features between the trademarks in issue. With regard to the devices themselves, the 'split' in the Global Warming device was one such significant feature. Critically, the court also held that the word elements such as 'DT NEW YORK' formed part of Global Warming's trademark and were not an extraneous feature of the type which a court should ignore in assessing confusing similarity. In the latter regard, it seems that the court applied the passing off test under the common law instead of the more clinical and narrower assessment required under the Trademarks Act.

The claim for payment of a reasonable royalty was also dismissed as a result of the finding of non-infringement. The court was, however, critical of the expert evidence given by Puma to support a claim for a 10% royalty and seemed to suggest that a maximum royalty of 5% of sales would have been more reasonable.

Chris Job, Adams & Adams, Pretoria