Monday 28 September 2009

Darren Olivier

Copycat comments: PUMA's failure

Last week Afro-IP reported on Puma's failure to win an infringement appeal - see here. Afro-IP now briefly looks at whether copycat businesses are best fought on dilution grounds and whether devices on shoes are really mere adornment.

left: decorative or distinctive?

1. Was the PUMA case a case to be fought under S34(1)(a) or was it not really one for unfair advantage and detriment under S34(1)(c)?

Copycat businesses make their livelihood as close as possible to the IP protection frontiers of the registered IP holders. Look-a-like or copycat businesses have the advantage of considering the trade mark register before deciding to adopt a potentially similar (but not identical) device, together with a name that is not similar. This allows them to trade without causing "a likelihood of confusion" (the crux of S34(1)(a)) whilst at the same time getting those increased sales that justify their business model. Global Warming successfully did just that.

Under S34(1)(c) it is not necessary to show a "likelihood of confusion". The crux of this infringement section involves showing unfair advantage and detriment to the distinctive character of the complainant's trade mark - more appropriate in this type of case one would have thought. One suspects that the initial sniper-like approach of Puma in only claiming S34(1)(a) was because they were interested in the cost (and time) saving attached to showing a mark to be well known under S34(1)(c). Perhaps I am missing something?

2. One tends to underestimate the importance of devices (eg the Puma device, The Nike Swoosh, the Adidas three stripes) as distinctive markings on shoes. Consider how you recognise and purchase sport shoes - is the device or the wording more recognisable? Perhaps this is why counsel for Global Warming, correctly in my view, did not raise argument that the device was mere adornment (as Judge Harms appeared to hope for)? Afro Leo also feels that the judgment (even if ultimately correct) was a little too quick to conclude that the presence of PUMA word mark in the first registration was necessarily fatal to PUMA's claim, without reasoning its importance within the mark when viewed as a whole.

3. The fact that use of the mark on Global’s packaging differed from that used on the shoe (held to be irrelevant) may well be relevant if it was pleaded as an independent infringing use of the trade to be considered on its own merits. It is not clear from this judgment what the High Court judge had held.

Darren Olivier

Darren Olivier

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