Background facts

Last week the German Federal Court of Justice affirmed a decision of the Higher Regional Court of Hamburg ordering the owner of a trademark, which was to some extent parodying a well-known trademark, to agree to the deletion of his trademark. The attacked trademark registration was found to be detrimental to the reputation of an older mark. The defendant could not rely on the parody exception, the Federal Court of Justice stated.

The appellant, a successful and well-known German sportswear distributor owns, inter alia, the following word/figurative mark containing the word “PUMA” and an image of a jumping wild cat:

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The defendant registered the following word/figurative mark containing the word “PUDEL” (German for poodle) and an image of a jumping poodle: 

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The defendant used his trademark on clothes:

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The appellant claimed for deletion of the defendant’s trademark.

Summary of the decision

The Federal Court of Justice decided in favour of the appellant and ordered the defendant to agree to the deletion of its trademark.

The Court found that the signs were not identical but, despite clear differences, showed similarities in accordance with German trademark law. Although the similarities were not strong enough to cause a likelihood of confusion between the signs, the success of the defendant’s product would highly depend on the PUMA trademark’s great reputation. By using his trademark, the defendant, thus, would exploit the distinctiveness and the reputation of the PUMA trademark to the detriment of the appellant.

With regard to the parody exception (freedom of art and freedom of speech) evoked by the owner in his defence, the Court pointed out that this defence would not justify the registration of the disputed trademark as these constitutional rights would not allow the defendant to register a similar sign for identical or similar goods. Quite to the contrary, the appellant could rely on his constitutionally protected property right in the trademark. This right outweighed the defendant’s constitutional rights.

The balance of rights would therefore favour the appellant with regard to the question of registering a trademark.

Impact for brand owners:

The decision is the first Federal Court of Justice decision on the cancellation of a trademark parodying a well-known mark. From the press release published (the full reasons have not been rendered at publication of this summary), it can be seen that the Court has decided to take a rather strict approach in these kinds of cases, meaning that it will not accept the parody exception when it comes to trademark registrations – a welcome result of course for owners of well-known trademarks.

The decision is coherent with the scope of protection of the rights of freedom of expression and arts. These rights intend to protect opinions but shall not provide commercially valuable property as a trademark registration would.

What remains to be seen is whether the Federal Court of Justice in its reasons takes the opportunity to develop the judicature also with regard to the use of trademark parodies.

In earlier decisions concerning potential trademark infringements by merely using parodies the German Courts mostly took a rather liberal approach and decided in favour of the potential infringers. It was held that brand owners generally had to accept criticism of their company, including their brands and that potential infringers could rely on the constitutionally protected rights of freedom of arts and expression. These rights outweighed the brand owner’s constitutionally protected property right because the parodies were found to promote the public exchange of opinions.

Parodies were only found to be an infringement where they were not used to encourage exchange of opinions but to pursue commercial aims. Such limits of the parody exception are said to be reached when the main purpose of the parody is to either harm the trademark’s reputation or commercial value or if the parody is primarily used to promote the sale of the goods of the potentially infringing party by exploiting the good reputation of the brand owner’s trademark.