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On 25th January, 2008, Mr Justice Etherton handed down his judgment in D Jacobson & Sons Limited v (1) Globe GB Limited, (2) Globe Europe SAS ,1 a case concerning the use of designs and logos on the side of trainers. The decision is especially noteworthy for brand owners because central to the case was the extent to which a manufacturer can claim a monopoly over a particular design by registering it as a trademark. The market for trainers and sports shoes is an extremely valuable one with an estimated 52 per cent of the general public purchasing a pair of trainers during the course of a year. This case underlines the need for brand owners to introduce and maintain a clear branding strategy and to keep up to date with current consumer perceptions of their branding.
BACKGROUND TO THE PARTIES
The Claimant, D Jacobson & Sons Limited ('Jacobson') bought the 'Gola' footwear brand and associated intellectual property rights in 1996. This brand was very popular in the 1960s and 1970s for trainers and football boots. Jacobson felt that the brand had not been fully exploited for several years and bought Gola with the specific intention of doing so. There are two elements to the Gola business, 'Gola Classics', created for the premium end of the market and 'Gola Sport', aimed at the volume end of the market and is sold at lower prices to major retailers across the UK.
Jacobson is the registered proprietor of the two registered trademarks in issue in the case, namely the UK and Community registered trademarks for the Wing Flash logo (together, the 'Gola Trademarks'). The registration documents for the UK logo describe the Wing Flash logo as consisting of 'a single colour applied in two parallel bands of uniform width extending from the waist of the footwear and in a tapered horizontal band extending from the aforesaid band nearest to the heel to the seam of the heel itself, the colour contrasting with the colour of the shoe'.
Side of Gola trainer showing Wing Flash logo
Wing Flash Logo Trademark
In 2006, Jacobson's turnover was approximately £70m, of which 40 per cent was attributable to the Gola brand. In 2005 Jacobson sold Gola footwear with an estimated...