Puma experiences global warming
19/03/2007

Puma AG Rudolf Dassler Sport vs Global Warming (Pty) Limited : Judgment of The Cape Of Good Hope Provincial Division of the High Court of South Africa dated 14 March 2007 (Case No. 1546/2002).

This case involved a trial action launched by Puma AG Rudolf Dassler Sport ("Puma"), the well-known German manufacturer and distributor of clothing and footwear, against a South African entity, Global Warming (Pty) Limited ("Global Warming"), which is an importer and distributor of footwear, based on trade mark infringement and passing-off.

Puma sought an interdict (injunction) against Global Warming and also payment of a reasonable royalty by Global Warming, because of its infringement, in terms of the provisions of Section 34(3)(d) of the Trade Marks Act in the amount of 10% of its gross sales over the relevant period.

Puma is the proprietor in South Africa of two trade mark registrations for its "FORM STRIP device" as follows:

Global Warming used the following trade mark on footwear it imported and sold:

Global Warming denied that its trade mark was confusingly similar to the FORM STRIP device and also argued that its footwear also bore the trade marks DT NEW YORK or DTNY (or DOWN TOWN NEW YORK).

In dismissing the action and refusing any relief, the Court concluded that there were significant distinguishing features between the trade marks in issue. With regard to the devices themselves, the "split" in the Global Warming device shown above was one such significant feature. Critically, also, the Court held that the words "DT NEW YORK" formed part of the Defendant's trade mark and were not an extraneous feature of the type which a Court should ignore in assessing confusing similarity as was done is Adidas Sportsschufabriken ADI Dassler KG vs Harry Walt & Co. (Pty) Ltd 1976 (1) SA 530 (T). In the latter regard, it seems that the Court applied the passing-off test under the common law instead of the more clinical and narrower assessment required under the Trade Marks Act.

The claim for payment of a reasonable royalty obviously fell flat with the finding of non-infringement. The Court was, however, critical of the expert evidence given by Puma to support a claim for a 10% royalty and seemed to suggest that a maximum royalty of 5% of sales would have been more reasonable.

19 March 2007