Puma AG Rudolf Dassler Sport v Global Warming (Pty) Limited

Puma AG Rudolf Dassler Sport instituted a trade mark infringement action against Global Warming (Pty) Ltd concerning two registered trade marks. Both trade marks were registered in class 25 for footwear and clothing. The first mark (TM 1980/05551) consisted of a tapering stripe on the side of a shoe running from the heel to the sole with dotted lines and the word PUMA above it. The second mark (TM 1982/04607) consisted of a similar device but without the dotted lines, not limited to use on the side of a shoe, with a blank space in the stripe, and without the PUMA word mark. Global Warming manufactured and marketed shoes bearing the words 'DT NEW YORK' with a stripe running from the heel that tapered and split in two with a contrasting colour intruding section. Puma claimed infringement under s 34(1)(a) of the Trade Marks Act 194 of 1993 and sought an interdict and damages calculated on a notional royalty basis. The High Court dismissed the claim with costs. Puma appealed with leave of the Supreme Court of Appeal.

• Whether Global Warming's use of a stripe on its shoes constituted trade mark infringement under s 34(1)(a) of the Trade Marks Act 194 of 1993
• Whether the stripe on Global Warming's shoe was so nearly resembling Puma's registered marks as to be likely to deceive or cause confusion
• Whether the stripe on Global Warming's shoe was perceived as a source identifier or mere adornment
• What constitutes the relevant trade mark on Global Warming's shoe for purposes of comparison
• Whether subjective intention of an alleged infringer is relevant in determining objective likelihood of confusion
• The proper basis for claiming damages in the form of notional royalties in trade mark infringement cases

The appeal was dismissed with costs.

The binding legal principles established are: (1) Trade mark infringement under s 34(1)(a) of the Trade Marks Act 194 of 1993 requires an objective comparison between the registered mark and the defendant's actual use, considering the overall impression and applying a global appreciation test; (2) Where an alleged infringing mark consists of multiple elements (such as a device and words), the whole mark must be compared to the registered mark, not merely individual components in isolation; (3) The question of likelihood of confusion or deception is determined objectively based on the impression on the average consumer, not on the subjective intention of the alleged infringer; (4) The intention to compete must not be confused with the intention to mislead - subjective mental state is irrelevant to the objective determination of likelihood of confusion.

The court made several obiter observations: (1) It suggested (without deciding) that Global's stripe may have been perceived as mere adornment rather than a source identifier, referencing the European Court of Justice decision in Adidas regarding the two-stripe versus three-stripe issue; (2) It noted that certain factors considered by the trial court (differences between marks on packaging versus shoes, Puma's subsequent trade mark application, and Puma's failure to produce shoes with the registered marks) were not permissible in a trade mark infringement case, though they might be relevant in passing-off; (3) The court corrected the trial court's error regarding notional royalty damages, explaining that such claims are designed to obviate proof of actual loss in intellectual property cases - citing Learned Hand J, the court explained that 'the whole notion of a reasonable royalty is a device in aid of justice, by which that which is really incalculable shall be approximated, rather than that the patentee, who has suffered an indubitable wrong, shall be dismissed with empty hands.' A claimant need only prove the number of infringing articles and the reasonable royalty rate, though the court noted reservations expressed in Reed Executive.

This case is significant in South African trade mark law for several reasons: (1) It clarifies the objective test for trade mark infringement under s 34(1)(a) of the Trade Marks Act 194 of 1993, requiring comparison based on overall impression and first impression principles; (2) It reinforces that registered trade marks do not create monopolies over concepts or ideas; (3) It distinguishes between the intention to compete and the intention to mislead, confirming that subjective intention of the alleged infringer is irrelevant to the objective question of likelihood of confusion; (4) It addresses the distinction between use of a device as a source identifier versus mere adornment; (5) It clarifies (obiter) the basis for claiming damages in the form of notional royalties in intellectual property infringement cases, explaining that such claims are designed to obviate the need to prove actual loss.