When the cat kills the dog… Parody and German trademark law

In a recent decision, the German Federal Court decided that the owner of trade mark consisting of a parody to the “PUMA” trade mark must consent to his trademark being deleted (decision I ZR 59/13 of 2 April 2015).

The trade mark in question consisted of the picture of a poodle jumping in the same style as the famous cat of prey of Puma.

In addition, the word “Pudel” was written in the same style as the word “Puma” in the older trade mark. Obviously, it was intended as a parody of the “PUMA” trade mark, and was registered for, i.a. t-shirts. The I. Senate found this to be an infringement of the trade mark rights of Puma: although it opinioned that the poodle trademark was sufficiently different from the “PUMA” trade mark that consumers would not be led to a direct confusion between both (Sec. 9 para 1 Nr. 2 German Trademark Act), they were sufficiently similar to assume that the younger trade mark took unfair advantage of the distinctive character and reputation of the “PUMA” trade mark without due cause (Sec. 9 para 1 Nr. 3 German Trademark Act). In fact, it is hard to argue that the poodle trade mark would have enjoyed as much attention would it not have been a parody of the “PUMA” trade mark.

Such cases of parody always need to consider the basic right of freedom of expression and freedom of art, both laid down in Art. 5 of the German Basic Law, speaking in favor of the parody. However, the trade mark owner can also rely on a basic right, namely the right of property, which is also laid down in the German Basic Law. The German Federal Court did balance both, ruling that the basic right of expression and art could not go so far as to allow a registration of the parody as a trade mark itself.

Yet, the decision directly only relates to a registration for the poodle trade mark. Whether the mere use of that sign would also constitute a trademark infringement, could be evaluated differently. For in this case, additional circumstances need to be fulfilled, mainly that the parody also is used as a trademark, pointing to the origin of the goods. This was, however, not decided by the German Federal Court.

In the end, the dog therefore still might bite back.