On 2 April 2015, the German Supreme Court (Bundesgerichtshof, “BGH”) ruled in favour of the world-famous sports-brand “Puma”. The corresponding registered device-mark shows a “leaping puma”. Puma’s opponent, a Hamburg designer, himself registered a trademark showing a “leaping poodle”. This trademark was meant to be a parody on Puma. Although he may (at least as for now) continue using his mark, the “leaping poodle” must now be deleted from the trademark-registry: “In relation to the right arising out of a famous trademark, The Defendant may not successfully rely on the fundamental right to the freedom of the arts or on the fundamental right to free speech. His rights must stand back from the Plaintiff’s trademark rights that equally are protected by the constitution, because the fundamental rights do not provide any possibility to the Defendant to register his own trademark covering the same or similar goods” (BGH, I ZR 59/13 – Leaping Poodle).
This German judgment is highly relevant to Austria as well. This not only applies because the Trademark Law is harmonized to a great extent on European level, but also because the Austrian Supreme Court (Oberster Gerichtshof, “OGH”) often considers precedents decided by the BGH, particularly in case pertinent Austrian case-law is not available.
Last but not least, the OGH itself has dealt with the scope of protection of famous trademarks on numerous occasions. E.g., the “Firn” candy (which is quite famous in Austria) won against a same-named café and thus prohibited the “Firn” café from further using its name, because “the trademark’s good reputation that is based on fresh peppermint flavour” may, in the sense of “freshness and/or refreshment“, be transferred not only onto the Defendant’s café, but also onto their events as well as their casting- and Go-Go dance performances (OGH, 4 Ob 36/04d – Firn).
Consequently, the OGH very likely would also have thrown the “leaping poodle” to the “leaping puma”.