Wednesday 16 September 2009

Darren Olivier

Copycat success - Puma appeal dismissed

The Supreme Court of Appeal has handed down its second decision in a few days on trade mark issues - one that will be seen as a victory for copycat businesses. Thanks to Debbie Marriott for the tip off.

Puma AG Rudolf Dassler Sport sued Global Warming (Pty) Ltd for trade mark infringement. Two trade marks and a copycat shoe were in issue (see representations here). Puma sought relief by way of an interdict and damages calculated on a notional royalty basis on the basis of section 34(1)(a) of the Trade Marks Act 1993 (in this case: similar mark/identical goods/likelihood of confusion). The High Court, after hearing evidence, dismissed the claim with costs. The Supreme Court of Appeal (per Harms DP, four others concurring) dismissed the appeal in a quick and lucid judgment. Puckrin SC, Joubert and Newdigate SC were in action this time.

The Court held that:

1. "Puma’s reliance of the first registration is doomed because of the prominence on the name PUMA" (see para 7 ).

2. Re the second registration: "As a matter of first impression I came to the same conclusion as did the trial court (ed: ie no likelihood of confusion). Argument did not convince me to the contrary..." (see para 9).

The appeal court did not dispute that "...the likelihood of confusion or deception involves a value judgment; that a global appreciation is required; that regard must be given to the overall impression given by the marks; and that registered trade marks do not create monopolies in relation to concepts or ideas."

For a description of the relevant registrations relied on by Puma see para 3.

Right: Copying cats made easy

The SCA, helpfully, corrected the High Court on a number of other issues which were found to be irrelevant (I) or wrong (W) (paras 10 - 12):

1. that the mark on Global’s packaging differed from that used on the shoe (I);

2. that Puma after instituting action in this case applied for registration of a trade mark that approximated Global’s stripe (I);

3. that Puma did not produce in evidence, as it undertook to do, a shoe with either of these trade marks (I);

4. the subjective intention of Global in adopting the stripe (I); and

5. the claim for notional royalty could not have succeeded in the absence of proof of actual loss (W).

One also felt that the Harms DP would have welcomed the opportunity to decide on the applicability of the ECJ Adidas decision on the South African infringement test (see para 6) ie whether Global's use of device on the shoe was mere adornment or actually a source identifier, and to what extent it matters. It seems a pity that argument was not lead - Afro Leo would have welcomed it too. Further commentry to follow.

Darren Olivier

Darren Olivier

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