Left Globe version of the Gola ‘Stripe’ (shown right in black and white)
Trade Marks – Training Shoes: side stripe design was fully capable of operating as a trade mark. The case of Jacobson and Globe addresses the issue of the extent to which a mark used on an item is a mere matter of design rather than a genuine badge of origin, in this case, specifically in relation to the designs and stripes used on the side of training shoes. Jacobson (Gola) argued that the defendants (“Globe”) had infringed its registered trade marks (UK and CTM) in its Gola “Wing Flash” logo, by using the logo on Globe shoes, and were also liable for passing-off. Globe denied these allegations, and counter-claimed that the registrations of the Wing Flash logo as trade marks were invalid.
Jo Crouch of DMH Stallard considering the Judgment said, “Globe argued that the Wing Flash logo was not a sign capable of distinguishing the goods of Jacobson from those of other undertakings, that the logo was devoid of any distinctive character, and that the logo was a sign or indication which has become customary in the bona fide and established practices of the trade. They also pleaded no infringement, on the basis that their shoe side design was not confusingly similar to the Gola Wing Flash trade marks.”
On validity, “Globe argued that consumers are likely to consider stripes on the side of trainers as being nothing more than design features rather than brand logos. The Court disagreed, finding that the Wing Flash logo was an unusual and inherently distinctive design, and fully capable of operating as a mark denoting origin. The Court rejected the invalidity counter-claim.”
On infringement, “The Court saw survey evidence on the issue of confusion. One group of participants was shown photographs of a Gola shoe, with the Wing Flash logo, but all other Gola marks removed. A second group was shown photographs of a Globe shoe, with the Globe’s side design, but all other means of identification removed or obscured. The participants were asked to look at the photo of the shoe and to state whether anything on it indicated the brand to them. If the respondent answered affirmatively, they were asked what it was about the shoe that indicated the make, and to name the brand if they could.”
11% of the first group correctly identified the “Gola” brand. In the second group, a small number (2%) wrongly identified the Globe shoe as originating from “Gola”.
The Judge agreed that the expert evidence and the witness and survey evidence indicated that there was a significant likelihood of confusion in consumers caused by the similarities in the Globe side design. He also agreed that Jacobson had made very extensive use of and had heavily promoted the Gola brand and logos and undoubtedly enjoyed a powerful reputation in them. The Court was therefore satisfied that Jacobson has established its claim for trade mark infringement, together with passing-off.
