Puma vs. Pudel – German Trademark Case

The German Federal Court of Justice decided that the holder of an older trademark is allowed to demand for the cancellation of a registered trademark which is just a parody of their established trademark (Judgment dated 2 April 2015; Case No.: I ZR 59/13). Background of the Case and Subject Matter In 2006 the defendant - a T-shirt designer from Hamburg - registered the word/device mark No. 30567514 “Pudel” („ poodle“) in combination with the image of a “leaping poodle” (see right below) at the German Patent and Trademark office (GPTO). The plaintiff - the famous manufacturer of sports equipment, Puma SE, is the owner of the German word/device mark No. 954 023, consisting of the word “Puma” and the image of a “leaping wild puma” since 1977. The plaintiff sought the cancellation of the defendant’s trademark because Puma SE is of the opinion that the defendant is infringing their trademark rights. The District Court of Hamburg sentenced the defendant to cancel his trademark (Judgment dated 10 February 2009; Case No.: 312 O 394/08). The Higher Regional Court rejected the appeal (Judgment dated 7 March 2013; Case No.: 5 U 39/09).    Decision of the German Federal Court of Justice The German Federal Court of Justice decided that the parody of an established trademark cannot be registered as a separate brand. First of all the German Federal Court of Justice pointed out that the competing signs are not similar enough to assume a likelihood of confusion. But, the defendant takes advantage of the distinctive character and the repute of the older “Puma” trademark. For this reason, the plaintiff has the right to demand the cancellation of the “Pudel” trademark. Also, the German Federal Court of Justice clarified that the plaintiff’s right in its long-established trademark in such case must be valued higher than the freedom of speech or the artistic freedom of the defendant, laid down in the German constitution. Link: Please note that a decision has been announced, however, the written decision not published yet. This will take a few more weeks. The following link refers to the Court's press release: http://juris.bundesgerichtshof.de/cgi-bin/rechtsprechung/document.py?Gericht=bgh&Art=en&Datum=Aktuell&nr=70695&linked=pm