Puma defeated in 'copycat' shoe case

South Africa
In Puma AG Rudolf Dassler Sport v Global Warming (Pty) Limited (Case 408/08, September 11 2009), the Supreme Court of Appeal of South Africa has dismissed an appeal by Puma AG Rudolf Dassler Sport against a decision of the High Court.
 
The High Court had held that use by Global Warming (Pty) Limited, a footwear retailer, of a tapering split stripe device and the words 'DT New York' on the side of a sports shoe did not infringe Puma’s registered 'Form Strip' trademarks (Registrations 1980/05551 and 1982/04607). Puma sought relief by way of an interdict and damages calculated on a notional royalty. However, the High Court dismissed the claim (for further details please see "Device mark injunction application kicked out by High Court"). Puma lodged an appeal. 
 
Puma relied on Section 34(1)(a) of the Trademarks Act (194/1993), which provides that the rights acquired by registration of a trademark are infringed by the unauthorized use in the course of trade, in relation to goods or services in respect of which the mark is registered, of an identical mark or of a mark so nearly resembling it as to be likely to deceive or cause confusion.
 
The Supreme Court of Appeal held that the mark to be considered and compared to Puma’s 'Form Strip' device marks was not the tapering split stripe device alone, but also included the words 'DT New York'. For this reason, Puma’s reliance on Registration 1980/05551, which includes the word 'Puma', was “doomed”. Seemingly, therefore, it was the difference between the words, and not the strip/stripes, that rendered this argument unsuccessful, as the court made no mention of the strip/stripes at issue.
 
The court thus raised the question of whether the tapering split stripe on Global Warming’s shoe would have been perceived by the purchasing public as a source identifier or as mere adornment. Although it was not necessary for the court to consider this question, it seems to have favoured the latter view.
 
When comparing Puma’s second trademark registration for its 'Form Strip' device (Registration 1982/04607) with Global Warming’s tapering split stripe device, the Supreme Court of Appeal agreed with the High Court’s finding that the average consumer would have regard to the fact that 'DT New York' was part of the mark and would have noted that the two stripes are significantly different. Consequently, Global Warming’s mark was not confusingly or deceptively similar to the registered trademark.
 
In essence, the court compared the whole of Global Warming’s tapering split device, including the words 'DT New York', with Puma’s device mark (which does not include any words). While the court recognized that the strip/stripes were different, the inclusion of the words 'DT New York' seemed to differentiate the two marks sufficiently to ensure that they were not confusingly or deceptively similar. 
 
Arguably, the danger of this approach is that the addition of words to associated distinctive device marks might not, in the future, be held to be trademark infringement by the courts. If that be the case, one wonders what purpose it serves to register a distinctive device mark without an associated word mark. Could a potential infringer get away with the argument that Nike's swoosh or Converse's star appearing on its otherwise branded shoe is mere adornment, indicating the first-rate quality of the product?
 
The court also found that the objective question of the likelihood of deception or confusion cannot be influenced by the subjective intention of a defendant. Despite the fact that Global Warming specifically sought to produce a shoe that approximated one of Puma’s shoes, without infringing its trademarks, the court was dismissive of this aspect of Puma’s case and emphasized that the intention to compete must not be confused with the intention to mislead.
 
The appeal was dismissed with costs.
 
Adams & Adams represented Puma on appeal.
 
Chris Job and Mandy Gordon, Adams & Adams, Pretoria

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