Federal Supreme Court (Bundesgerichtshof, BGH), dated 02 April 2015, file ref. I ZR 59/13 - Puma versus Pudel
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 the established trademark.
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In 2006 the defendant – a T-shirt designer from Hamburg – registered the word/figurative mark No. 30567514 “Pudel” (“poodle”) in combination with the image of a “leaping poodle” (see right picture above) with the German Patent and Trademark office.
With its decision dated 02 April 2015, the Federal Court of Justice decided that the plaintiff, the manufacturer of sports equipment Puma, has the right to demand from the defendant the cancellation of the “Pudel” trademark.
The Federal Court of Justice first of all pointed out that the competing signs - although being similar – are not similar enough to assume a likelihood of confusion. However, the court took the view that the defendant is taking advantage of the distinctive character and the repute of the well-known trademark “Puma”. Pursuant to German trademark law, trademark owners can also request the cancellation of a similar trademark if the relevant public associates one trade mark with the other and the new trademark takes advantage of the reputation of an already existing well-known trademark. As it has been already decided by the European Court of Justice in the decision “L'Oréal/Bellure” the taking of unfair advantage of the distinctive character or the repute of a trademark does not require that there is a likelihood of confusion or a likelihood of detriment to the distinctive character or the repute of the trademark or, more generally, to its proprietor. The advantage arising from the use by a third party of a sign similar to a trademark with a reputation is an advantage taken unfairly by that third party of the distinctive character or the repute of the mark where that party by using the mark seeks to ride on the coat-tails of the trademark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the trademark’s image.
The German Federal Court of Justice in the end was of the opinion that this was also the case with the trademark “Pudel”.
This result is not altered by the fact that the defendant’s trademark is a parody of the Puma trademark. The German Federal Court of Justice makes clear that the property right of Puma 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.