Puma AG Rudolf Dassler Sport v Sports Soccer Ltd

Date

3 November 2003

Legislation

Trade Marks Act 1994, s.10(1)

Keywords

summary judgment; trade mark infringement; counterfeiting; evidence threshold

Counsel

James Abrahams, Denise McFarland

Solicitors:

DLA; CMS Cameron McKenna

Judge:

Etherton J

Court:

High Court (Chancery Division)

Reported:

[2003] EWHC 2705

Summary:

The claimant made sports shoes under the trade mark PUMA. The defendant was at the time the second largest retailer of sports and leisure goods in the UK and ran about 125 shops selling more than 7 million shoes annually. The claimant purchased shoes from shops in Milton Keynes and Leeds and formed the view that they were counterfeit.

Upon inspection of the defendant’s central warehouse in Milton Keynes over a period of three days around 7000 PUMA shoes were examined and about half of them considered to be counterfeits. Each of the labels in the counterfeit shoes stated that they had been made at a particular factory in China which was an authorised PUMA shoe producer between November 2001 and May 2002. The Defendants refused to give undertakings or provide information to the claimants on their suppliers.

The claimant issued proceedings for trade mark infringement and sought summary judgment on two grounds: firstly that the shoes were counterfeit, and secondly that, even if not counterfeit, they had been imported into the EU without the claimant’s consent. During the hearing the second ground was abandoned and the case thus turned on whether it was possible for the claimant to establish that the shoes were counterfeits.

Four key differences were alleged:

• Stitching - the stitching on the alleged counterfeit shoes was manual whereas the genuine shoes were stitched by machine and were stitched differently;
• Heel Counters - a piece of moulded plastic is inserted into the heel of genuine shoes in order to provide stability and was absent in the counterfeit shoes;
• ·Security labels - special security labels known as Secutag labels were incorporated into its shoes and were absent in the counterfeits; and
• ·Mould Code - the wrong code number was shown on the shoe.

Decision

The judge held that the evidence before the court clearly and overwhelmingly pointed to the disputed shoes being counterfeits and that, although he was not to conduct a mini-trial for a summary judgment application, he could conclude on the overwhelming evidence before him that summary judgment should be made out.