Gola kicks Globe into touch

Fresh from BAILII comes a trade mark ruling on Friday from the Chancery Division (England and Wales), from Mr Justice Etherton: D Jacobson & Sons Ltd v Globe GB Ltd and another [2008] EWHC 88 (Ch). Jacobson acquired the GOLA footwear brand and its associated intellectual property rights way back in 1996. Globe sold and imported footwear into the United Kingdom, including shoes known as 'Globe Finale', 'Globe Wedge' and 'Globe Motto'. Globe's shoes featured a stripe design on the sides known as the 'Globe side design' and the word 'globe'. Jacobson sued for infringement of its UK and Community registered trade marks (above, left and right) for its 'Wing Flash' logo in respect of Globe's markings on its trainers (illustrated below, right). Jacobson also alleged that Globe was passing its footwear off as its own, seeking an injunction and the destruction of the offending products. Globe counterclaimed for a declaration that Jacobson registered trade marks were invalid.

On the validity issue Globe submitted that the Gola trade marks were invalid because the Wing Flash logo was not a sign capable of distinguishing the goods of its proprietor from those of other undertakings. As to infringement, Globe argued that the side design was not intended to be a mark of origin, but rather mere decoration.

Etherton J held for Gola on both issues. In his opinion

* Jacobson's marks were inherently distinctive. Taking the evidence as a whole, including evidence of matters post-registration which might throw light on what the attitude of the average consumer had been at the earlier date of registration, the Wing Flash would have been recognised by the average consumer as a distinctive mark of origin of the shoes, distinguishing their provenance from those produced by other manufacturers.

* infringement had been established, since the consumer was likely to be confused into believing that Globe's and Jacobson's products came from related undertakings.

* Globe was also liable for passing off. Even though there was no evidence of actual loss and damage by reason of the confusion generated by the Globe shoes, the confusion between the two brands put Jacobson's goodwill at risk since it was unable to control Globe's use of its markings.

The disturbing thing in this case, says the IPKat, is not the result or the law, but the very large degree to which expert evidence has been deployed. He seems to remember judicial statements -- admittedly going back to the previous century -- to the extent that likelihood of confusion of the relevant consumer was something that the courts should be able to determine for themselves. Did something change in the meantime?