2010 Convergence 1 (2010)

handle is hein.journals/convrg2010 and id is 1 raw text is: International Bar Association - If the shoe fits, wear it: Puma's plight on...
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If the shoe fits, wear it: Puma's plight on trade mark infringement
Candice Brummer
Spoor & Fisher, South Africa
Puma AG Rudolf Dassier Sport (Puma) recently lost a battle in the Supreme Court of Appeal of South Africa in an appeal against the decision of the Cape Town High Court, which
dismissed its claim for trade mark infringement against Global Warming (Pty) Ltd (Global Warming) in terms of Section 34(1)(a) of the Trade Marks Act 194 of 1993 (the Act). Puma
sought relief by way of an interdict and damages calculated on the basis of a notional royalty.
In considering whether Global Warming's use of a trade mark comprising of a stripe, which is applied to the side of a shoe and splits in two, was an infringement of Puma's rights
acquired by various trade mark registrations depicting a 'form strip' applied to the side of a shoe, the High Court held that Puma failed to prove that the trade marks so nearly resembled
each other as to create a likelihood of deception or confusion.
The High Court held that the trade marks held significant differences. Firstly, that the stripe on Global Warming's shoe, which contained a split, differed from Puma's trade marks.
Further, that the average consumer would regard the words DT NEW YORK, which appeared on Global Warming's shoe, as part of its trade mark and consequently distinguished it
entirely from Puma's trade mark, which incorporates the word PUMA
The Supreme Court of Appeal held that in determining whether a likelihood of deception or confusion exists, attention must be paid to the first impression of the trade marks. Further, that
an objective comparison between the trade mark registration and the actual use of the alleged infringing trade mark is required.
Puma's trade mark registrations
Puma is an intemationally-renowned German company manufacturing clothing and footwear. The following are representations of the trade mark registrations, registered in class 25 for
inter alia footwear, which laid the basis for Puma's claim for infringement:
1. Trade Mark Registration No. 1980/05551
This trade mark registration is described as a 'mark which consists of a tapering stripe on the side of a shoe or boot'. The stripe runs from the upper portion of the heel and meets the
sole at the middle of the shoe. The trade mark registration is also endorsed with a disclaimer that states that the registration gives no rights to the stylised shoe as depicted by means of
the dotted lines. The word PUMA also appears above the tapering stripe.
2. Trade Mark Registration No. 1982/04607
This device is not limited to use on the side of a shoe, there are no dotted lines and there is a blank space in the tapering stripe close to its widest end. The trade mark registration is
endorsed with an undertaking that in use, the blank space appearing in the mark will be occupied by matter of descriptive or non-distinctive character, or by a registered trade mark in
respect of the same goods, or will be left vacant.
Puma's managing director in its South African subsidiaries, Puma Sports (Ply) Ltd and Puma Sports SA (Ply) Ltd, Mr Ronald Alexander Rink, testified on behalf of Puma. Mr Rink testified
on the extent of the reputation of Puma's trade marks in South Africa. Mr Rink claimed that Puma is considered to be one of the top three companies in the branded athletic footwear
companies, alongside Nike and Adidas as other leading market brands. In addition, he claimed that the mark was exclusively promoted through the use of its form strip via media,
advertisements and sponsorships of material and club teams, such as Kaizer Chiefs, Mamelodi Sundowns, Ajax Cape Town, as well as high profile individuals in various sporting
disciplines, with the likes of Mahaya Ntini and Serena Williams. On an intemational level, for example, Puma has sponsored sports teams in Italy, Poland, Senegal and Switzerland.
Mr Rink further told the Court that the footwear bearing its trade marks were worn by people from all walks of life and were easily available at fashion boutiques, informal retail street
vendors and flea markets, in varying price ranges. Further, in his experience, people recognised the shoes more by Puma's trade mark rather than through word of mouth. In addition, Mr
Rink said that insomuch as the athletic parlance identified Nike's 'tick', the 'orm strip' was what Puma was known by.
Global Warming's trade mark
Global Warming, amongst other things, imports and distributes footwear in South Africa in its capacity as a manufacturer, wholesaler and retailer of such goods.
The following is a representation of a shoe bearing Global Warming's trade mark in question:

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