The cats that got the cream / plant-based cream substitute

The friendly chocolate sponge cakes that we all know and love, such as Colin the Caterpillar, aren’t the only animals embroiled in legal issues this year. Others have also been keen to flex their muscles during the various lockdowns and protect themselves against rivals lurking in the long grass.

The cases below highlight why businesses must protect their brands and pursue third parties who may have sailed too close to the wind.

The tail of two cats – Roberts v Puma 

The Claimant, Christophe Roberts in this New York based litigation pursued the global sports apparel brand, Puma. The award-winning Brooklyn based artist, Roberts, alleged Puma had misappropriated his signature artwork and design, his “Roar Mark” registered as a Trade Mark in the USA in 2019, after first using it on clothing in 2013.

Roberts alleged Puma’s “Bite Back Mark” had copied his Roar Mark after Puma hired several artists who had worked with Roberts. Roberts alleged the Bite Back Mark, first used by Puma in mid-2018 (and worn by Puma’s brand ambassador Jay-Z at a 2019 NBA Finals), was confusingly similar to his Roar Mark. Roberts sought a preliminary injunction preventing Puma from using the Bite Back Mark for the marketing, promotion and sales of their goods and services.

Puma denied all of the allegations and counter-claimed to invalidate Roberts’ Roar Mark.

Roberts' Roar MarkRoberts’ Roar Mark.          Puma's Bite Back Mark  Puma’s Bite Back Mark 

The Court recognised the similarity between the two marks. However, Puma didn’t simply use one set of hand drawn teeth designs in its marketing, and some resembled the Roar Mark more closely than others. But Roberts was seeking an injunction against all of Puma’s teeth designs. Given the wide range of teeth designs the Court held it was unlikely a consumer would believe Roberts was commercially linked to Puma.

Other factors weighing against Roberts’ claim included:-

  • The channels in which Roberts and Puma sold their goods was markedly different. Roberts only sold his goods via his website, art installations and events. Puma meanwhile sold via its Puma branded stores, licensed retailed partners and its branded website.
  • Critically, there had been no actual evidence of consumers confusing the Roar Mark and the Bite Back Mark. Roberts’ submissions that some of his social media followers and two of his customers had believed Jay-Z’s NBA Finals Puma clothing was affiliated to Roberts was not enough. It was held that the confusion must be assessed by considering the public as a whole, not just those already aware of Roberts’ Roar Mark.
  • There was no evidence of bad faith by Puma, despite them hiring some of Roberts’ artists. The Bite Back Mark was consistent with Puma’s feline theme and Puma would have little to gain by trying to piggyback off Roberts’ comparatively “minimal commercial reputation”.

The Court rejected Roberts’ claim for the preliminary injunction and the case was to proceed to a full trial.

Despite this, the parties informed the Court on 20 July they had reached a settlement and Roberts’ withdrew his claims against Puma, and Puma withdrew their Counter Claim against Roberts. The terms of the settlement have not been publicised. The parties have however saved years of litigation, legal costs and the uncertainty of a trial.

It seems likely the parties will continue using their respective marks and Roberts’ already high profile within the sneaker and basketball community has no doubt been raised further, not an entirely unhelpful outcome given Roberts’ commercial relationship with Puma’s direct competitor Nike.

 

A leap too far – Puma v Gemma Group

After 8 years of EU Trade Mark litigation, the Board of Appeal has told Puma they don’t have a monopoly on all leaping cat designs. Cue sad cat face.

In 2013 Puma filed an opposition against Gemma Group’s EU Trade Mark (“EUTM”) application for “Machines for processing of wood; machines for processing aluminium; machines for treatment of PVC”.

Gemma Group's EUTM Application Gemma Group’s EUTM Application

Puma opposed Gemma Group’s application based on it being too similar to Puma’s earlier distinctive registered marks and granting Gemma Group’s mark would take unfair advantage of Puma’s reputation and cause a detriment to Puma’s EUTMs (for clothing, accessories and sports equipment).

Puma's 1992 markPuma’s 1992 mark      Puma's 1993 mark Puma’s 1993 mark

The Board of Appeal held that whilst some elements of the marks were similar (they are both leaping cats), they were not almost identical when the marks are considered as a whole: –

  • Puma’s cat leaps to the left whilst Gemma Group’s cat leaps to the right at a lower angle;
  • Unlike Puma’s cat, Gemma Group’s cat is depicted in blue and white; and
  • The outline of Puma’s cats are unbroken unlike significant elements of Gemma Group’s cat.

The Court rejected Puma’s claim, that the granting of Gemma Group’s mark would cause a “serious risk” of unfair advantage and detriment over Puma’s marks. The Court highlighted the fact the goods and sections of the public they were targeted at were entirely different. Puma targeted their goods at the general public interested in sports goods. On the other hand, Gemma Group targeted the professional public acquiring niche machinery for commercial purposes.

Time will tell if Puma appeals the decision to the Court of Justice of the European Union. But that cat fight won’t be cheap. All we need now is a Puma King TV series.

Oatly v Glebe Farm Foods

Cream is made from milk. Fact. But fear not, for cats who prefer a milk substitute, there are oat-based options out there.

The recent High Court battle between Oatly and the Glebe Farm Foods, the Cambridgeshire family run business behind “PureOaty” is over. Oatly lost.

Oatly and PureOaty.

Oatly alleged PureOaty had infringed various Trade Marks they owned and was “passing off” Oatly’s packaging and obtaining an unfair advantage as a result.

For Oatly to successfully claim passing off against Glebe Farm Foods, it needed to show Oatly has:-

  1. Established goodwill (i.e., a customer following) in the relevant marketplace;
  2. That Glebe Farm Foods has misrepresented their products or services as being related to Oatly’s business, which leads to or is likely to deceive customers; and
  3. The misrepresentation causes or is likely to cause Oatly damage (i.e., financial loss) as a result.

Having extensively marketed and sold oat-based milk-substitute drinks in the UK since the early 2000s, Oatly was easily able to establish goodwill for the OATLY brand in the UK.

In respect of the second point above, the Judge noted the initial similarities between the packaging (they are both blue and have an unusual font for the capitalised brand names).  However, the Judge held these similarities were at a very general level and there was no actual or likely confusion by Glebe Farm Foods using “PUREOATY”.

The fact Glebe Farm Foods’s logo sits directly above the PUREOATY logo on the packaging is no doubt helpful.

Glebe Farm Foods maintained their brand name of PUREOATY was chosen to address the source and content of their product (as well as a play on the word “PURITY”), and it was not an attempt to benefit from the OATLY brand. The High Court accepted this argument.

A key takeaway here is to avoid using descriptive words for brand names, as successfully pursuing new market entrants, adopting the same technique, can be tricky.

I’m sure the David v Goliath PR surrounding the case will be welcomed by PureOaty. Time will tell if Oatly’s market dominance pushes PureOaty into insignificance, or Oatly acquire their new UK competitor. Oatly’s May IPO valued their business at $10 billion so there may be some change in the pot.

Daniel Crate

Associate Solicitor – Intellectual Property & Dispute Resolution 

rhw Solicitors LLP