Trade Mark Infringement Action by Competitors

A merchant (not related to the firm Puma) in the perfume market sued a competitor for infringement of Puma's trade mark

by its use of

both for perfumes.

Puma's trade mark has been used for perfumes on the Austrian market through sales by means of its website. The Plaintiff sued for trade mark infringement on the basis of Trade Mark Law and on the Law Against Unfair Competition for misleading consumers by use of a confusingly similar sign of a competitor.

The court dismissed the claim on the basis of Trade Mark Law. According to it only the owner of a trade mark or a person deriving its right from the owner can sue for trade mark infringement.

But the Supreme Court (case number 17 Ob 10/11m) for the first time states rightly that according to the Law on Unfair Competition also third parties can sue for misleading use of a trade mark of another trade mark owner by competitors and demand injunction and damages. The preconditions for it are that the trade mark owner's product is on the market and known to the consumer and that the signs are confusingly similar. In case of combined picture and word marks the words usually remain in the memory of the consumers more than pictures when the pictures are not the more important parts, which is here not the case. Since here not only the words are entirely different but also the pictures are not identical (the direction of the jump is different and the big cat is in the trade mark black but white in the sign of the defendant) the two signs are not confusingly similar. Therefore, the claim of the plaintiff was finally rejected.

The lesson to learn is that the user of a sign similar to a trade mark cannot rely merely on the fact that the owner of a trade mark does not feel disturbed by it and, therefore, tolerates the use, because other competitors can also sue on the basis of the Law Against Unfair Competition. In order to be on the safe side, he has to ask for allowance of his use by the trade mark owner so that he has a derivative right to it.

DI Helmut Sonn