Earlier this year, the German Federal Supreme Court (“BGH”) had occasion to examine the scope of trade mark protection in the realm of commercial parodies. The Plaintiff was the well-known German manufacturer of sportswear and sports equipment, and was the registered owner of the word/figurative mark featuring the word “Puma” in combination with the image of a “leaping wild cat”. In 2006, the Defendant – a T-shirt designer from Hamburg – had registered with the German Patent and Trademark Office the word/figurative mark “Pudel” (meaning “poodle”, in German) in combination with the image of a “leaping poodle”. The Plaintiff had therefore sought to invalidate the Defendant’s trademark on the grounds that it was infringing their own earlier registered mark.
The BGH was quick to come to the conclusion that the two competing marks – while similar – were not similar enough as to cause a likelihood of confusion under Section 9(1)(2) of the German Trademark Act. However, the BGH was of the opinion that the Pudel mark had infringed the broader protection enjoyed by the Puma mark enjoyed by virtue of its reputation. In this case, the BGH was of the opinion that the Defendant had taken advantage of the distinctive character and reputation of the Plaintiff’s mark as per Section 9(1)(3) of the German Trademark Act, which afforded the Plaintiff a right to demand for the invalidation of the “Pudel” mark.
The GBH’s decision is not withstanding the Defendant’s argument that its mark was a parody of the “Puma” mark. In the GBH’s opinion, the Defendant’s right to free speech and artistic freedom is subjugated to the Plaintiff’s right to protect in its established trademark.
While the realm of trademarks has rarely been a battleground between artistic expression and commercial interests, in the German courts at least however, it appears that the line has clearly been drawn in favour of protecting the latter.