Objection dismissed due to excess passiveness
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The Maritime and Commercial Court has issued its ruling in Jack Wolfskin Ausrüstung für Draussen GmbH & Co KGaA v Wolverine World Wide Inc (Case V-7-09, August 16 2011).
Jack Wolfskin Ausrüstung für Draussen GmbH & Co KGa was the owner of trademark registrations in Class 25 of the Nice Classification for a device mark showing the paw print of an unknown four-clawed animal.
It had been using this mark on boots for many years.
Wolverine World Wide Inc had also applied a paw print (from a wolverine) to its boots and had been marketing these boots in Denmark since 2004 through Danish company Bonvita ApS.
In 2008 Wolfskin's Danish lawyer asked Bonvita to cease the sale and marketing of Wolverine boots that were marked with the paw print in question.
The court found that the trademarks were confusingly similar to the ordinary consumer and that Wolverine's trademark infringed Wolfskin's device mark. However, due to Wolfskin's passiveness for three years and nine months, the court ruled that it had not taken steps to prevent Wolverine's use of the mark within a reasonable timeframe.
Consequently, the court ruled that Wolverine’s mark could co-exist with Wolfskin’s mark and found for Wolverine. In addition, the court ordered Wolfskin to pay Dkr54,000 in costs.
Mads Marstrand-Jørgensen, Norsker & Co, Copenhagen
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