Legal Updates

Intellectual Property Law – Trade Mark Infringement of UK and Community Trade Mark – Passing Off – Likelihood of Confusion on the Part of the Public – Footwear – Injunction and Destruction of Goods – Invalidity of Trade mark – Actual Loss or Damage

The case of D Jacobson & Sons Ltd v Globe GB Ltd and Another [2008] concerned an alleged infringement of trade mark on the grounds of likelihood of confusion. The claimant in this case bought the 'Gola' footwear brand in 1996, as well as all other associated intellectual property rights. The first and second defendants, together known as ‘Globe’, were associated companies. The first defendants sold footwear in the UK and the second defendant imported footwear into the UK.

The footwear being sold and imported by Globe included the 'Globe Finale', the 'Globe Wedge' and the 'Globe Motto' shoes. Those shoes had particular features, which included a stripe design on the sides. This design was known as the 'Globe Side Design'. The shoes also bore the word 'Globe'.

The claimant alleged that the defendants had infringed one of the UK registered trade marks and its Community registered trade mark in respect of its 'Wing Flash' logo. It argued that the markings on the Globe trainers caused this infringement. Furthermore, it alleged that the defendants had passed off Globe footwear as that of the claimants.

Accordingly, the claimant sought an injunction and the destruction of the offending marks.

However, the defendants made a counterclaim. The defendants sought a declaration that the claimant's registered trade marks were invalid.

The issue to be decided in this case was whether the trade marks were distinctive, which was a requirement outlined in s.3 of the Trade Marks Act 1994 (“the Act”) (For the UK trade mark) and Council Regulation (EC) 40/94 (“the Regulation”) (For the Community trade mark).

The defendants argued that the Gola trade marks were invalid because the Wing Flash logo was not a sign capable of distinguishing the goods of the claimant from those of other origin. With regards to the issue of the alleged infringement, it submitted that the Globe Side Design was not intended to be a mark of origin, but rather should be considered a decoration.

The court held as follows:

§        The defendants had failed to establish that the Gola trade marks were invalid. It was decided that the Gola trade marks inherently possessed the necessary distinctiveness of a trade mark for the purposes of s.3 of the Act and for the purposes of the Regulation.

§        When considering all of the evidence, which included evidence of matters arising since registration which may throw light on what the attitude of the average consumer had been at the earlier date of registration, it was held that the Wing Flash logo on the Gola shoes would have been recognised by the average consumer as a distinctive mark of the origin of the shoes. This meant that the Wing Flash logo distinguished the Gola shoes from those produced by other manufacturers.

§        The claimant had successfully argued the case for infringement. It had established that there would be a likelihood of confusion in the mind of the public. This likelihood of confusion arose due to Globe's sign. The average member of the public could think that the Gola shoe with the Wing Flash Logo and Globe's Finale, Wedge and Motto shoes came from an economically linked undertaking.

§        In such circumstances, the defendants were liable for passing off. The court found that on the evidence presented before it, there could be no doubt that goodwill and reputation were attached to the Gola shoes.

§        Furthermore, the court was of the opinion that it was equally clear that the Wing Flash logo was identified by many with the Gola brand, and so the Globe Side Design misrepresented to the public that the Globe shoes were related to the Gola shoes.

§        Even though there was no evidence of actual loss or damage due to the confusion generated by the Globe shoes, the confusion between the two brands had put the claimant's goodwill at risk since it was unable to control the defendants' use of the Globe Side Design on their shoes. Therefore, because of the likely confusion between the two brands, the court decided that there was a real risk of damage tot the claimant's reputation in its trade mark, and hence a real risk of injury to its goodwill.

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© RT COOPERS, 2008. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.

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