Leaping feline design held to be confusingly similar to Puma's logo

In Resolution No 4176-2014/TPI-INDECOPI, the Administrative Court of Appeals has revoked a first instance resolution (Resolution No 3264-2013/CSD-INDECOPI) issued by the Peruvian Trademark Office (INDECOPI), and declared that the infringement claim filed by Puma SE against importer Medicina Deportiva SAC, which had been rejected at first instance, was well founded.

On February 26 2013 Puma filed a trademark infringement action against Medicina Deportiva for importing shin guards bearing a leaping feline design, on the basis that it was confusingly similar to the leaping feline logo registered in Puma's name for goods in Class 28 of the Nice Classification, which includes shin guards. Puma alleged that the goods were clearly counterfeit as the importer had copied the Puma logo.

The INDECOPI admitted the claim but refused to issue the injunction requested by Puma, on the basis that there was no need for a preliminary immobilisation and seizure of the goods. As a result, the goods could not be seized and they completed the importation procedure into Peru for commercialisation.

On November 20 2013 the INDECOPI issued Resolution No 3264-2013/CSD-INDECOPI, which rejected the claim filed by Puma on the basis that the design on the imported goods was not sufficiently similar to Puma's logo to create a likelihood of confusion among consumers and, therefore, the importation of these goods did not infringe Puma's mark.

The INDECOPI based its decision on the fact that the feline design and Puma's logo were different, as Puma's logo represented a cat with its mouth closed, its tail pointing upwards, with eyes and ears, while the leaping feline on the imported goods had its mouth open, its tail pointed downwards, and it had no eyes or ears.

The INDECOPI also noted that another sign representing a leaping feline was registered for the same goods in the name of Slazenger Limited. However, the INDECOPI only mentioned this fact, but did not analyse the sign at issue.

On December 4 2013 Puma filed an appeal, claiming that the feline design on the imported goods was very similar (almost identical) to Puma's logo. The fact that there were some minor differences between the feline design displayed on the imported goods and Puma's logo did not imply that the designs were not confusingly similar. With respect to Slazenger's design, Puma also stated that the companies had signed a worldwide coexistence agreement.

On March 18 2014 Puma filed a writ with additional arguments regarding the similarities on the designs, including decisions issued in various jurisdictions (including Peru) in which the authorities had denied registration to feline designs or declared that feline designs were confusingly similar to Puma's logo.

On November 17 2014, the Administrative Court of Appeals revoked the first instance resolution on the basis that the feline design on the imported goods was confusingly similar to Puma's logo, and could create a likelihood of confusion among consumers.

The Court of Appeals based its decision on the fact that both feline designs were figurative trademarks and therefore, could be confusingly similar even if there were some variations or modifications. Therefore, it declared that the claim against Medicina Deportiva was well founded, imposed a fine of 2 UIT on the importer, and ordered the payment of the legal fees and expenses of Puma.

Medicina Deportiva may file an administrative civil claim before the Civil Administrative Court requesting the nullity of the Court of Appeals' decision within three months of notification. At the time of writing, it was unknown whether such a claim had been filed.

María Inés Herrera, BARLAW - Barrera & Asociados, Lima