Global Warming sails close to the wind & succeeds
16/09/2009

On 11 September 2009 the Supreme Court of Appeal (SCA) of South Africa handed down judgement in the matter between Puma AG Rudolf Dassler Sport (“Puma”) and footwear retailer Global Warming (Pty) Limited (“Global Warming”).

The appeal was against a decision reached by the court a quo that Global Warming’s use of a tapering, split-stripe device (shown in the photograph below) and the words “DT New York” on the side of a shoe did not infringe Puma’s registered “Form Strip” trade marks (no. 1980/05551 and 1982/04607, represented below). Puma sought relief by way of an interdict and damages calculated on a notional royalty. The High Court dismissed the claim and Puma lodged an appeal.

Global Warming’s tapering split-stripe device

Registration no. 80/05551

Registration no. 82/04607

Puma relied on Section 34(1)(a) of the Trade Marks Act 194 of 1993, which provides that the rights acquired by registration of a trade mark are infringed by the unauthorised use, in the course of trade of goods or services in respect of which the trade mark is registered, of an identical mark or of a mark so nearly resembling it as to be likely to deceive or cause confusion.

The SCA held that the mark to be considered and compared to Puma’s Form Strip device trade marks was not the tapering, split-stripe device alone, but included the words “DT New York”. For this reason, it held that Puma’s reliance on its trade mark registration no. 1980/05551, which includes the word “Puma”, was “doomed”. Seemingly, then, it was the difference between the words and not the strip/stripes that rendered this argument unsuccessful, as the court made no mention of the two strip/stripes in issue.

Indeed, the question was raised by the SCA whether or not the tapering split stripe on Global Warming’s shoe would have been perceived by the purchasing public as a source identifier or as mere adornment. Although it was not necessary for the court to consider this question, it seems to have favoured the latter view.

When comparing Puma’s second trade mark registration for its Form Strip device (registration no. 1982/04607) with Global Warming’s tapering, spilt-stripe device, the SCA agreed with the court a quo’s finding that the average consumer would have regarded “DT New York” as part of the mark and would have noted that the two stripes are significantly different and, consequently, that Global Warming’s mark was not confusingly or deceptively similar to the registered trade mark.

In essence then, the SCA compared the whole of Global Warming’s tapering, split-stripe device, including the words “DT New York”, with Puma’s Form Strip device trade mark, which does not include any words. While the court recognised that the strip/stripes were different, the inclusion of the words “DT New York” seemed to sufficiently differentiate the two trade marks to render them not confusingly or deceptively similar.

With respect, the danger of this approach is that the addition of word marks to associated distinctive device trade marks might not, in future, be held to be trade mark infringement by the courts. If that be the case, one wonders what purpose it serves to register a distinctive device mark without an associated word mark. Surely the inclusion of the words “CT Paris” or “SS Tokyo” alongside the Reebok Stripe Check device cannot render it a trade mark that does not infringe Reebok’s rights? Could a potential infringer get away with the argument that the (Nike) Swoosh or the (Converse) Star appearing on his otherwise branded shoe is mere adornment, indicating the first-rate quality of the product? One certainly hopes not.

The SCA also found that the objective question of the likelihood of deception or confusion cannot be influenced by the subjective intention of a defendant. Despite the fact that Global Warming specifically sought to produce a shoe that approximated one of Puma’s shoes without infringing its trade marks, the Court was dismissive of this aspect of Puma’s case and emphasised that the intention to compete must not be confused with the intention to mislead.

The appeal was dismissed with costs.

Adams & Adams represented Puma AG Rudolf Dassler Sport on appeal.

Chris Job
Chairman
chris@adamsadams.co.za

Mandy Gordon
Partner
mandy@adamsadams.co.za

ADAMS & ADAMS