Cat fight: does TIGRIS trademark infringe PUMA's rights?


Facts
Clothing manufacturer Tigris obtained a trademark (Trademark 197349) for a combination word-image mark consisting of the silhouette of a tiger and the word "tigris", which is "tiger" in Hebrew.

PUMA, AG Rudoph Dassler Sport, a German clothing company, filed an opposition claiming that the tiger was confusingly similar to its logo. 

Both companies make hats and shoes. 

PUMA claimed that the mark was non-distinctive and confusingly similar to PUMA’s marks, and that it diluted the PUMA mark. According to PUMA, the similarity lay in the combination of an image and a word, particularly as the word was bold and in capitals. PUMA's lawyers also noted that both cats had their heads, tails and claws in the same place.

Deputy Commissioner Noach Shalev Shlomovits accepted the opposition and refused the mark. He also awarded damages of NIS30,000 (about US$9,000) to PUMA.

Comment
The fact that one manufacturer uses a combination mark including an image and a word does not give it a monopoly for marks of this sort; nor does writing the brand name in capital letters or in a bold typeface. Although it is true that both big cats have the head and tail at different ends, and depict claws on the feet, this fact is not particularly confusing. Both tigers and pumas are big cats, but tigers are bigger and fiercer than pumas. Although shown in silhouette, many people would have little trouble telling the felines apart. For those less familiar with feline anatomy, the opposed mark included the word "tigris", which was something of a giveaway.

PUMA is not the only company to use a silhouette of a big cat for branding purposes. So do Slazenger and Jaguar, which both have Israeli trademarks in Class 25 for clothing. Interestingly, Slazenger has a mark for the silhouette alone without any word. Its cat, which is rather more like a puma than a tiger, is also facing to the left – as is the Jaguar jaguar, which is also registered in Class 25.

 

With the word "tigris", which is very different from "puma", it is difficult to see the two marks as confusingly similar. This is particularly the case since PUMA does not have a monopoly on silhouettes of big cats. As such, there appears to be little logic in this decision.

Is PUMA better known than Jaguar or Slazenger? District Court Judge Michal Agmon Gonen ruled that four-stripe training shoes did not infringe Adidas’s three-stripe mark and that there was room for a cheaper, less exclusive brand (for further details please see "Importer prevails against Adidas: four-stripe trainers do not infringe") That decision sets a precedent for allowing marks that are inspired by, but not confusingly similar to, leading brands. However, the Adidas decision has been appealed to the Supreme Court.


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