Globe scores own goal in Gola Case

In D Jacobson & Sons Ltd v Globe GB Ltd ([2008] EWHC 88 (Ch)), the High Court of England and Wales has held that D Jacobson & Sons Ltd's 'wing-flash' logo for Gola trainers was infringed by a stripe design which appeared on the side of GLOBE-branded footwear known as the 'Globe Finale', 'Globe Wedge' and 'Globe Motto'. The court held that consumers were likely to be confused into believing that the trainers originated from related undertakings under Section 10(2) of the Trademarks Act 1994.

Jacobson acquired the long-established GOLA brand and associated IP rights in 1996. In 2006 it issued proceedings against Globe GB Ltd for infringement of its UK and Community trademarks for the 'wing-flash' logo and passing off. Jacobson sought an injunction against Globe and the destruction of the infringing products.

Globe denied trademark infringement and passing off and counterclaimed that the GOLA marks were invalid because the 'wing-flash' logo was:

• not capable of distinguishing the goods of its proprietor from those of other undertakings;
  
  
• devoid of any distinctive character; and
  
  
• a sign or indication which had become customary in the good-faith and established practices of the trade.

Globe also argued that its stripe design was not intended to be a mark of origin, but only a decoration. It also claimed that the 'wing-flash' logo itself was part of the structural design of the shoe and had failed to achieve the ubiquity of Nike's 'swoosh' and adidas's three stripes (where the logo forms the dominant origin identifier of the shoe). Therefore, the 'wing-flash' logo could not distinguish GOLA-branded footwear from others on the market.

The court concluded that typical purchasers of sports footwear were used to regarding the signs on the side of shoes as identifying a particular brand, and would not consider the 'wing-flash' logo as merely decorative. Jacobson's trademarks possessed the necessary distinctiveness for the purposes of Section 3 of the act and Article 7 of the Community Trademark Regulation (40/94). Alternatively, the court found that the marks had acquired a sufficiently distinctive character by the date of the registration. They were therefore not invalid.

In assessing the likelihood of confusion, the court applied well-established principles from earlier case law and concluded that whether or not the shoe design was taken as a whole, the average consumer would consider Globe's stripe design to be a mark of origin - as confirmed by survey evidence and examples of advertising in which the stripe design without the word 'globe' appeared.

Although there was no evidence of actual loss and damage, the court held that the confusion between the two brands and Jacobson's inability to control Globe's use of its markings put Jacobson's goodwill at risk. As there was no doubt that goodwill and reputation attached to Gola shoes, Globe was liable for passing off and infringement of Jacobson's UK and Community GOLA trademarks under Section 10(2) of the act.

Jeremy Dickerson, Burges Salmon, Bristol