Puma’s endeavour to halt Global Warming

Puma AG Rudolf Dassler Sport (“Puma”) failed to generate any sympathy from the Supreme Court of Appeals (the “SCA”) in its bid to end the importation and sale of shoes bearing a resemblance to its Puma Sprint Shoe by Global Warming (Pty) Limited (“Global Warming”).

Puma sought an interdict and the payment of a reasonable royalty, in terms of sections 34(1)(a) and 34(3)(d) of the Trade Marks Act 194 of 1993, against Global Warming, an importer and distributor of footwear, in the Cape High Court in 2007 on the basis that Global Warming had been selling footwear depicting a mark that is confusingly similar to Puma’s registered trade marks. When the application was dismissed by the Cape High Court, with costs, Puma appealed to the SCA.

The SCA considered and rejected Puma’s appeal on the following grounds:

* In respect of Puma’s contention that Global Warming’s mark so nearly resembles the first Puma trade mark registration as to be likely to deceive or cause confusion, the SCA confirmed that the whole of the “infringing mark”, consisting of the stripe and the name DT New York (and not the “stripe” only, as Puma contended) must be compared to the first registration. In deciding the question, the SCA held that due to the prominence of the Puma mark in the first registration, the first registration can be distinguished from Global’s product and that Puma’s reliance on this trade mark registration is doomed.

* With regard to the second Puma trade mark registration, the SCA confirmed that “the question of likelihood of confusion and deception is a matter of first impression” and that “one should not peer too closely at the registered mark and the alleged infringement to find similarities and differences”. Based on the aforementioned, as well as fact that the “infringing mark” consisted of a stripe and the name DT New York, and not the stripe only, the SCA confirmed the Cape High Court’s decision that the second registered trade mark and the “infringing mark” were not confusingly or deceptively similar.

* In relation to Puma’s attempt to rely on the subjective intention of Global Warming to support a finding of infringement, the SCA affirmed that:

o the intention to compete must not be confused with the intention to mislead; and
o the subjective intention of the defendant can hardly assist in deciding the objective question of the likelihood of deception or confusion for the same reason that the defendant’s intention not to confuse or deceive could assist in a defence of non-infringement.

The above is in line with modern trends to move away from the defendant’s subjective mental state and to, primarily, consider the issue of likelihood of confusion and consequent consumer deception.

* Finally, the SCA rejected the court a quo’s finding that a claim for reasonable royalties cannot succeed in the absence of proof that Puma had suffered actual loss. In this regard, the SCA emphatically states that “the purpose of permitting a claim for damages in the form of notional royalties is to obviate proof of actual loss” and that “all a claimant has to prove (when relying on section 34(3)(d)) is … the number of infringing articles and the reasonable royalty rate”.

Amy Jones – Candidate Attorney

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