D Jacobson & Sons Ltd v Globe GB Ltd & Anor (Rev 1)

A design feature on footwear may function as a trade mark where the average consumer perceives it as indicating trade origin rather than merely decorating the product. Distinctiveness is assessed by reference to the goods, the relevant market and the perception of the average consumer at the registration date. For infringement, the relevant sign is identified in its commercial context, but the court must isolate the feature complained of and assess its effect on the trade mark’s origin function. A likelihood of confusion may exist without proof of actual confusion or loss. Passing off requires goodwill, misrepresentation and actual or likely damage.

The claimant owned UK and Community registrations for the Wing Flash logo used on Gola footwear. It alleged that the defendants’ side-stripe design on several trainer styles infringed those marks and amounted to passing off. The defendants counterclaimed that the registrations were invalid because the logo lacked distinctive character, was incapable of distinguishing goods, or had become customary in the trade. They also denied confusing similarity, misrepresentation and damage. The central issues were whether the Wing Flash logo functioned as a badge of origin, whether the defendants’ side design was a confusingly similar sign, and whether the elements of passing off were established.

1. Validity. The registrations were prima facie valid under Trade Marks Act 1994, s.72, so the burden lay on the defendants. Validity had to be assessed at the respective registration dates. The essential function of a trade mark is to guarantee origin. Distinctiveness was assessed by reference to the goods and the perception of the average consumer.
2. The Wing Flash logo was inherently distinctive in the context of footwear. Alternatively, the evidence established acquired distinctiveness. Side designs on trainers could function as brand identifiers, and the average consumer would recognise the Wing Flash logo as indicating Gola origin. The defendants’ objections concerning other Gola marks, the absence of a branding manual and the survey evidence did not alter that conclusion.
3. Infringement. The relevant sign was the Globe Side Design, rather than necessarily the whole shoe. The Side Design was used and perceived as a mark of origin, including on shoes where the word “globe” was absent. The goods were identical, the marks had relevant visual similarities, and the evidence established a likelihood that consumers would believe the goods came from economically linked undertakings. Actual confusion was unnecessary, although the survey and witness evidence supported the finding. The claim would have succeeded even if the whole Globe shoe had been treated as the sign.
4. The presence of other branding on the defendants’ shoes did not prevent infringement. Nor was proof of actual loss and damage necessary to the infringement claim.
5. Passing off. Goodwill and reputation attached to Gola footwear and the Wing Flash logo. The Globe Side Design misrepresented that Globe footwear was Gola footwear. The resulting confusion created a real risk of injury to the claimant’s reputation and goodwill, satisfying the damage requirement.
6. The claimant succeeded on infringement of both registered marks and on passing off. Further submissions on relief were adjourned.

First-instance judgment. No prior appellate decision is stated in the judgment.