The PUMA kills the PUDEL

Parodies of well-known brands are popular, as the cases of Lusthansa (Lufthansa), Adihash (Adidas), Mordoro (Marlboro) and many others demonstrate. Cases in which a registered mark appears, in its overall appearance, to be a parody of another mark are rarer. The Federal Court of Justice (BGH) has now had to decide on such a case to the detriment of Puma.

The bone of contention is a German word/figurative mark consisting of the lettering "PUDEL" and the outline of a leaping poodle (see right), which has been registered since 2006 for clothing and t-shirts. This troubled the well-known sports goods manufacturer PUMA, which has a considerably older and very well-known mark consisting of the lettering "PUMA" and a leaping puma. The imitation of the PUDEL mark is obvious. Far too obvious, which is why PUMA sought cancellation of the mark against its proprietor.

The court's decision

With success. The lower courts (LG Hamburg and OLG Hamburg) have already upheld the cancellation action. The Federal Court of Justice (BGH) has now confirmed these decisions as the court of last instance by judgment of 02.04.2015 (Az. I ZR 59/13).

In doing so, the court stated that although there are unmistakable differences between the two marks, they are nonetheless similar in trade mark law terms but nonetheless similar. This similarity does not lead to a likelihood of confusion, but does lead to an exploitation of the distinctive character and repute of the PUMA mark. The proprietor of the mark gains attention through the imitated design that it would not otherwise receive. In relation to the rights conferred by the well-known PUMA mark, fundamental rights to freedom of artistic expression and to freedom of expression must therefore take a back seat. According to the court's reasoning, the protection of fundamental rights does not extend so far as to provide a basis for the registration of a reputation-exploiting mark.

Conclusion

The decision is to be welcomed because it clarifies and reinforces the protection of the well-known mark. However, only a famous mark enjoys this extensive protection against dilution and reputation exploitation. All other marks, by contrast, are protected only against likelihood of confusion. Had PUMA not been well-known, the cancellation action would presumably have been unsuccessful.