Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark.
Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations.
Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public.
In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?
The Court is of the opinion that the form strip marks are part of a well-known family of marks. The formstrip has been used on articles since 1960 and were brought to the attention of the public with considerable advertising budgets. Due to this long and intensive use, the formstrip became widely known in the market. The formstrip marks consist of a single unbroken stripe with a circular curve at one end that runs from the bottom left to top right (where the vertical part is shorter than the horizontal part and the stripe runs from the back of the shoe to the forefoot).
Visually, Monshoe’s shoes ‘Shoecolate’ and ‘Pearlz’, dispose of a mark on the side that is very similar to the (family) formstrip mark of Puma. Moreover, the sign is used for the same goods. In this instance, Monshoe benefits from the reputation of the brand that Puma has built up over decades and still maintains with large advertising budgets and campaigns. There is also a risk of dilution of the reputation of the family brand and, consequently, of the Formstrip brands that form part of the family. Consumers may be less likely to associate them with Puma, due to the fact that Monshoe markets the younger shoes Shoecolate and Pearlz. In time, the public may even start to think that the Formstrip marks applied to the side of a Puma shoe are indeed only decorative and no longer recognise them as a distinctive sign. This leads to detriment or a serious risk of detriment to the distinctive character and reputation of the Formstrip marks. In light of the the above, the court ruled that Monshoe's use of the signs on the shoes in concern constitute trademark infringement on Puma's Formstrip marks.
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