D Jacobson & Sons Ltd v Globe Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Etherton |
| Judgment Date | 25 January 2008 |
| Neutral Citation | [2008] EWHC 88 (Ch) |
| Docket Number | Case No: HC06C00058 |
| Court | Chancery Division |
| Date | 25 January 2008 |
[2008] EWHC 88 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
Strand, London, WC2A 2LL
Mr Justice Etherton
Case No: HC06C00058
Mr John Baldwin Q.C. and Mr Robert Onslow (instructed by DLA Piper UK LLP) for the Claimants
Mr Roger Wyand Q.C. and Nicholas Saunders (instructed by Bird & Bird Solicitors) for the Defendants
Hearing dates: 10 th– 14 th December 2007
Introduction
This case is about the designs and logos on the side of training shoes (“trainers”).
It raises, in the context of trainers, the familiar and important issue of the extent to which a mark is a mere matter of design rather than a genuine badge of origin, or, put a different way, the extent to which a manufacturer can claim a monopoly over a particular design by registration as a trade mark.
The Claimant, D Jacobson & Sons Ltd (“Jacobson”), claims that the Defendants, Globe GB Limited and Globe Europe SAS (together “Globe”), have infringed Jacobson's registered trade marks for its “Wing Flash” logo (“the Wing Flash logo”) by the use of markings on Globe's shoes, and have passed off their footwear as Jacobson's.
Jacobson claims an injunction, destruction of Globe's offending marks, an enquiry as to damages or an account of profits, and other relief.
Globe, for its part, denies infringement and claims that the registrations of the Wing Flash logo as a trade mark have at all times been invalid.
The issue at the heart of these proceedings is an important one generally, and particularly in the context of the market for trainers. That market is vast. In the region of 52% of the general public purchase trainers at some time during the course of the year. It is common for trainers to bear designs and logos on their sides.
Jacobson's business
Gola was first registered as a brand for footwear in 1905 by a manufacturer of football boots. The Gola brand was very popular in the 1960s and 1970s for football boots and trainers.
Jacobson was incorporated in 1982. It designs, imports, sells and exports all types of ladies', men's and children's footwear. In the UK Jacobson usually sells direct to retailers. It rarely sells to wholesalers, and even more rarely sells direct to the public.
Jacobson bought the Gola brand from Porter Chadburn plc together with all goodwill and other associated intellectual property (“IP”) rights in 1996. Gola was seen by Jacobson as a brand which had not been exploited to its full potential for a number of years, and was a “sleeping giant”.
So far as concerns these proceedings, there are two strands to the Gola brand. At the premium end of the trainer market, Jacobson created GOLA Classics. Footwear in this range has generally been sold at premium prices in top end retail outlets and in selected independents. The second strand is the GOLA Sport range. This is aimed at the volume end of the market. It has generally been sold at lower prices in major multiple retailers and in many small independents across the UK.
In 2006 Jacobson turned over approximately £70 million, of which approximately 40% was attributable to the Gola brand.
Jacobson is the registered proprietor of the two registered trade marks in issue in these proceedings. It is the registered proprietor of the UK registered trade mark No. 1113779 for the Wing Flash logo, registered as of 4. 5.1979 for shoes and boots in class 25 (“the UK Mark”). This was one of the IP rights acquired by Jacobson when it purchased the Gola brand in 1996. The UK Mark is registered as the following design, with the following description:
“The Trade Mark consists of a single colour applied in two parallel bands of uniform width extending from the waist to the facing of footwear and in a tapered horizontal band extending from the aforesaid band nearest to the heel to the seam of the heel itself, the colour contrasting with the colour of the shoe, as shown in the representation attached to the form of application.”
UK 1113779
Jacobson is also the registered proprietor of the Community registered trade mark No. 001909837 for the Wing Flash logo, registered as of 4.10.2000 for (among other things) footwear in class 25 (“the CTM”) with the following graphic representation:
CTM 1909837
It appears that the Wing Flash logo was produced in the early 1960s.
It also appears that the description of training shoes as “trainers” originated with shoes launched by Gola in 1968 called the Harrier Trainer.
In 2005 Jacobson sold 2,212,521 pairs of Gola footwear, with a trade value of £14.425 million, and a estimated retail value of £35.2 million, of which 44% were trainers which had the Wing Flash Logo.
Globe's business
The First Defendant sells footwear in the UK. The Second Defendant imports footwear into the UK. They are associated companies. Their parent company is listed on the Australian Stock Exchange.
Globe was originally founded in Australia in the mid 1970s by Stephen and Peter Hill. The Hill brothers had a passion for skateboarding. They helped to promote skateboarding in Australia.
The Globe brand was started in the 1990s to serve skateboarding and surf enthusiasts. The intention was to develop skateboarding footwear for the action sports market. Globe is a major sponsor of skateboarding and surfing events and elite skateboarding and surfing atheletes.
Globe produces, among other footwear, the Globe Finale, the Globe Wedge and the Globe Motto shoes. Those shoes bear certain features, including a stripe design on the sides (“the Globe Side Design”), the word “globe” and another design on the sole and elsewhere (“the Globe Device”). The following are pictures of the Finale.
In the Wedge and the Motto styles there is no word “globe” on either side of the shoe, but there is on the tongue.
Jacobson first became aware of the Globe Side Design in 2005.
Jacobson's complaint
Jacobson issued the Claim Form in January 2006.
Jacobson claims that Globe has wrongly infringed the UK Mark and the CTM (together “the Gola Trade Marks”) because the Globe Side Design on its Finale, Wedge and Motto trainers is similar to the Gola Trade Marks, and is likely to cause confusion on the part of the public as to an association between the Gola Trade Marks and the Globe Side Design.
Jacobson relies, for that claim, on the Trade Marks Act 1994 ( TMA 1994) s.10, Article 5 of the First Council Directive 89/104/EEC of 21 December 1988 (to approximate the laws of member state relating to trade marks) (“the Directive”), and Article 9 of Council Regulation (EEC) No. 40/94 of 20 December 1993 on the Community trade mark (“the Regulation”).
Jacobson further claims that it has goodwill or reputation attached to its shoes with the Wing Flash logo, and Globe, by marking its Wedge, Motto and Finale trainers with the Globe Side Design, has misrepresented to the public that its trainers are those of Jacobson; and Jacobson has or will be likely to suffer damage by reason of that erroneous belief generated by Globe's misrepresentation.
Globe's case
Globe admits that it has imported, offered for sale, and sold in the UK its Finale, Wedge and Motto shoes.
Globe claims, however, that the Gola Trade Marks are, and have been at all material times, invalid. Globe counterclaims a declaration by the Court to that effect pursuant to s.47 (1) of TMA 1994 and Article 51(1)(a) of the Regulation.
Globe claims that the UK Mark is invalid because its registration was and is contrary to the provisions of TMA 1994 s.3(1)(a), (b) and (d).
Globe claims that the CTM is, and has been at all material times, invalid because it is registered contrary to Article 7 (1)(a), (b) and (d) of the Regulation.
Specifically, Globe's case is that the Gola Trade Marks are and were invalid because (a) the Wing Flash logo is not a sign capable of distinguishing the goods of Jacobson from those of other undertakings (contrary to TMA 1994 s.3(1)(a) and Article 7(1)(a) of the Regulation); (b) the Wing Flash logo is devoid of any distinctive character (contrary to TMA 1994 s.3(1)(b) and Article 7(1)(b) of the Regulation); and (c) the Wing Flash logo is a sign or indication which has become customary in the bona fide and established practices of the trade (contrary to TMA 1994 s.3(1)(d) and Article 7(1)(d) of the Regulation).
Further, Globe claims that the Wing Flash logo has not acquired a distinctive character in relation to footwear as a result of any use that has been made of it by Jacobson.
Globe claims that, even if the Gola Trade Marks are and were validly registered, Globe has not unlawfully infringed those Trade Marks because Globe's Side Design is not confusingly similar to the Gola Trade Marks.
Globe also denies the allegation of passing off. It claims that it has made no representation that its trainers are Jacobson's trainers.
Globe further says that Jacobson has not proved any loss or damage or any likelihood of loss or damage as a consequence of the matters of which Jacobson complains.
TMA 1994 , the Directive and the Regulation
TMA 1994 , the Directive and the Regulation contain parallel provisions. As Kitchin J observed in Julius Sämaan Ltd v Tetrosyl Ltd [2006] EWHC 529 (Ch.), [2006] FSR 42 at para [46], TMA 1994 must, so far as possible, be interpreted in accordance with the Directive, and the relevant provisions of the Directive conform to those of the Regulation.
Community trade marks are governed by the Regulation.
It is convenient and appropriate, therefore, in the present case to refer principally to TMA 1994 (for the UK Mark) and the Regulation (for the CTM), with reference to the Directive only where...
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