Background of an actual case: A Hamburg-based designer came up with a parody of the globally established trademark “Puma”. He produced articles of clothing, particularly T-shirts, printed with the slogan “PUDEL” (“poodle” in German) together with the silhouette of a leaping poodle. The designer had registered this configuration as a word / figurative mark in the trademark registry. He was then sued by the sporting goods manufacturer Puma, which demanded that the registration of his “Poodle” trademark be deleted pursuant to Section 9 paragraph 1 numbers 2 and 3 of the Markengesetz (MarkenG, German Trademark Act), on the grounds that this infringed upon the word / figurative mark which the company had registered originally, i.e. the “PUMA” trademark featuring the silhouette of a leaping big cat.
The holders of an internationally known trademark are entitled to demand the cancellation of a corresponding parody trademark.
The sporting goods maker argued that the trademark “Poodle” could potentially be confused with the original it was lampooning, and also that the PUMA trademark’s popularity was being exploited. The designer disputed these assertions, while also claiming that his trademark enjoyed particular protection under the rights to artistic freedom and freedom of expression. In adjudicating the matter, the Bundesgerichtshof (BGH, German Federal Court of Justice) agreed with the lower courts’ ruling that the trademark “PUMA” had been infringed by the leaping poodle and upheld the plaintiff’s demand for cancellation. While the Federal Court of Justice did not agree that Puma’s trademark rights had been infringed under the aspect of confusion, it did find that the two trademarks were indeed similar. This is not surprising, given the designer’s intent to produce a parody – the essence of parody is, after all, to juxtapose similarity with distortion.
A parody’s eligibility for protection on the grounds of artistic freedom and freedom of expression must be subordinated to trademark law
In the end, the only problematic aspect was the commercial exploitation of just that parody effect, which is why the Federal Court of Justice also agreed that the PUMA trademark’s popularity had been exploited within the meaning of Section 9 paragraph 1 number 3 of the German Trademark Act (MarkenG). In this regard, the Hamburg designer could not claim recourse to the fundamental rights of artistic freedom and freedom of expression, even though these rights protect works of parody in principle. The reason was that this fundamental legal protection does not also cover the right to have a corresponding trademark registered. Accordingly, the principle that works of parody are worthy of special protection played no role in this particular trademark infringement case. The operative principle applied here is the one lying at the very heart of trademark law – namely “first come, first entitled to claim trademark protection.” This principle is derived from the idea that the act of holding a trademark is a right protected as a basic right, one that a subsequently registered trademark would infringe upon.
It follows, therefore, that it is not possible to parody an internationally popular trademark without infringing the trademark holder’s rights in the process. The fact that the upshot of the court’s ruling consisted “merely” in having the defendant’s trademark registration cancelled may not appear particularly harsh at first. After all, the defendant suffered no financial damage as a result. But it should be kept in mind that he may also face damage-compensation claims from the legitimate trademark holder (Section 14 paragraph 6 of the German Trademark Act). If the suing trademark holder is a major company, as in the case described, such claims can quickly spiral upwards to an amount likely to ruin the trademark infringer. Moreover, he will have to fend off a plaintiff with deep pockets who can easily pursue the matter through all stages of appeal.
So if you, too, are planning to register a trademark or if you are a trademark holder, be sure to have one of our attorneys for trademark law verify that there is no potential of collision with other marks.
Source: Ruling of the Bundesgerichtshof (BGH, German Federal Court of Justice) dated May 2nd, 2015, docket No. I ZR 59/13.