Introduction and claims
New Balance Athletic Shoe Inc. (hereinafter New Balance) claims that Best-seller A/S (hereinafter: Bestseller) has violated their rights to the shoe models GROUNDER HI and NUMBER 5 by marketing its shoe models named JJ Slick and JJ Stan.
Bestseller shall recognize
- that their shoes are illegal imitations of New Balance’s shoes;
- that the use of New Balance’s trademarks in Bestseller’s marketing mate-rial is a violation of New Balance’s trademark rights and/or design rights;
- that Bestseller is prohibited from producing, importing, marketing, selling and/or in other ways hand over or make arrangements regarding the models JJ Slick and JJ Stan;
- that Bestseller is prohibited from using New Balance’s trademarks and/or designs, and trademarks and/or designs that are confusingly similar with these;
- that Bestseller shall deliver shoes of the models named JJ Slick and JJ Stan, which are in Bestseller's stock, to New Balance for destruction and pay the related costs and
- that Bestseller shall pay DKK 12 million in remuneration and compensa-tion with interest from 30th July 2007.
Bestseller claims that all of New Balance’s claims shall be dismissed.
Shoes under the brand PF FLYERS have been sold since the 1930s when BF Goodridge developed a special inside sole, the so-called "Posture Foundation", which was patented in 1937, and made to support and enhance the wearer's posture. PF FLYERS had its heydays in the 1950s and 1960s.
New Balance, who produces performance shoes for running, etc. and lifestyle shoes for everyday and leisure, acquired in 2001 all rights to the trademark PF FLYERS and products, which are marketed under this brand, and relaunched two PF FLYERS shoes designed by Julie Rando; in 2003 GROUNDER HI, a redesign of Grounder from 1949 and in 2004 NUMBER 5.
JJ Slick and JJ Stan
Bestseller sells cloth and accessories for young men and women, teenagers and children, under a variety of brands including Jack & Jones. There are 480 Jack & Jones stores worldwide, including 57 stores in Denmark however the brand is also sold worldwide in other shops.
Bestseller has purchased 13,320 pairs of JJ Slick and 21,000 pairs of JJ Stan. Respectively 7,000 and 12,800 pairs have been sold. The sale prices in the shops were DKK 349.95 (inc. VAT) for JJ Slick and DKK 299.95 (incl. VAT) for JJ Stan.
Bestseller’s website and magazine
In Bestseller’s magazine "Reportage, Winter 2006", which according to a statement is printed in 292,300 copies, the JJ Slick is depicted with a Vespa scooter, while the underlying text refers to the "the MOD look." In the maga-zine and on Bestseller’s website, www.jackjones.com, the following collage was shown depicting New Balance’s PF FLYERS trademark in the upper right corner:
Preservation of evidence and injunction
In November 2006, New Balance requested the Bailiff's Court in Herning for an action regarding preservation of evidence. On 18th December 2006, New Balance requested the Maritime and Commercial Court for an injuction.
On 19th December 2006, The Bailiff's Court in Herning carried out the preservation of evidence at Bestseller.
During the the service of the injunction Bestseller’s Chief Legal Counsel Daniela Gomig-Hansen declared, among other things, that Bestseller would notify all customers and shops that JJ Slick and JJ Stan should not be sold and should be returned, that the magazine "Reportage, Winter 2006" should be removed from the shops and commercial outlets, and that Bestseller by the 8th January 2007 at the latest would provide an auditor's report. She also stated that 290,500 copies of the magazine had been produced/printed.
On 13th March 2007, New Balance’s attorney once again informed Bestseller that sale of the shoes had continued in a number of stores abroad. Gitte Damgaard Sloth from Bestseller announced on 14th March 2007 that the shoes in question had now been removed.
She [Gitte Damgaard Sloth] confirmed that Bestseller had purchased respec-tively 13,320 and 21,000 pairs of JJ Slick and JJ Stan. 7,000 pairs of JJ Slick and 12,800 pairs of JJ Stan were sold, in total 19,800 pairs. Bestseller’s stock contained currently 11,214 pairs of these shoes, of which 4,979 pairs were JJ Slick and 6,235 pairs were JJ Stan.
Decision by the Danish Maritime and Commercial Court
In accordance with the depositions it is assumed that GROUNDER HI and NUMBER 5 were presented in the U.S. and their designs were therefore dis-closed there prior to the release in the Community, and both shoes are retro designs; GROUNDER HI is an exact redesign and reuse of the PF FLYERS shoe from 1949 with roots back to the 1930s. These shoes are therefore not protected under Article 11 of Council Regulation No 6/2002 of 12th December 2001 on the Community design or by the Danish Copyright Law.
Both OHIM (Office of Harmonization for the Internal Market) and the Danish Patent and Trademark Office have rejected applications from New Balance for trademark registrations of the sole and the toe of the GROUNDER HI without the signs PF FLYERS. Bestseller’s use of similar shoe sole and toe without the signs PF FLYERS is therefore not a violation of New Balance’s trademarks.
GROUNDER HI is, as mentioned, a redesign of a shoe from 1949 with roots back to 1930s, which distinctive character through the years has emerged in the high toe with vertical ribs, in the outsole with pads in the special pattern shown in the above registered figurative mark and are fitted with small star-shaped points, and in a vertical "rail-stripe" on the heel.
NUMBER 5 is a modern design of a classic shoe (so-called sneaker), and is characterized by a slim elegant shape with well-defined proportions, one for this type of shoe distinctive and elegant chosen material, thoughtful details, which signals a dynamic and forward-looking movement, and characteristic stitches, which emphasize the design. The CHEVRON mark is embedded in the shoe by stitching going over the mark, which help to emphasize the dy-namics of the shoe.
The Court finds, based on this, that both GROUNDER HI and NUMBER 5 have such a distinctive character and expression of an individual effort that they are covered by the protection against imitations following the Danish Marketing Act art. 1.
JJ Slick is found, in its entirety and in its details, to be a slavish copy of GROUNDER HI. If the shoes are placed next to each other it is extremely dif-ficult to see any difference between the shoes, which are easily confused. The similarity is so clear that it is irrelevant for the overall assessment that some details, during a closer inspection, proves to be constructed in a slightly different way, including that JJ Slick has no air holes on the inside, and that this shoe only has eight eyelets against nine on GROUNDER HI.
JJ Stan is also found, in its entirety and in its details, to be a slavish copy of NUMBER 5. Also these shoes are confusingly similar and the similarity is so clear that it is irrelevant for the overall assessment that some details, during a closer inspection, proves to be constructed in a slightly different way, includ-ing that JJ Stan has eight eyelets against nine on NUMBER 5. Neither can it change the overall assessment that the side application on JJ Stan differs slightly from the side application on NUMBER 5 by an additional thin forward-looking line on the CHEVRON mark, and the use of this identical, or at least confusingly similar figurative mark on the Bestseller shoe is found to be infringing New Balance’s trademark rights to the CHEVRON mark.
The fact that JJ Slick and JJ Stan are featured with Bestseller’s J&J marks instead of New Balance’s PF marks do not impact on the similarity assess-ment. It is noticed that the J&J marks are placed the exact similar place and given a shape that is similar to the PF marks, except from the soles, which on JJ Slick and JJ Stan are without marks but otherwise are completely similar to the soles on GROUNDER HI and NUMBER 5.
It is the opinion of the Court, that JJ Slick and JJ Stan could only be produced with respectively the GROUNDER HI and NUMBER 5 as source, and that the imitations have been made with the intension to apply the design and distinctive character of the original shoes. Bestseller is therefore liable according to the Marketing Act art. 21, without regard to if the imitation has been performed by one of Bestseller’s own designers, according to the Danish Law 3-19-2 or, as explained by lawyer Gitte Damgaard Sloth, the imitation has been performed by an independent assistant in China, with whom Bestseller over many years has had business relations.
One can and should not be able to operate such a significant business as Bestseller, without having very thorough knowledge regarding the market and other products, especially the trend-setting product makers. In any case Bestseller must be the closest to bear the risk that a product that Bestseller buys from one of its regular business relationships proves to be a slavish imitation.
It is undisputed that Bestseller has reproduced a photograph of a collage in which the New Balance trademark PF FLYERS is included, on www.jackjones.com and in the magazine "Reportage, Winter 2006", where Bestseller displayed its product JJ Slick, which according to the above is an imitation of PF FLYERS GROUNDER HI. Bestseller’s use of the trademark PF FLYERS on the website and in the advertising magazine that was printed in around 290,000 copies, in connection with the marketing of fake product is a serious violation of New Balance’s right to the mark PF FLYERS, and the violation must, as with the violation of the CHEVRON mark, be ascribed Best-seller as intentional or negligent, according to the Trade Marks Act art. 43.
New Balance’s claims regarding recognition, prohibition and destruction are subsequently granted.
Bestseller shall furthermore pay remuneration to New Balance for the exploi-ration of GROUNDER HI and NUMBER 5, the CHEVRON mark and the mark PF FLYERS, and, as the necessary legal basis of liability is found according to the above, compensation for the further injury, which the infringement of the Marketing Act art. 1 and the violation of the trademarks have caused.
Based on an overall assessment of Bestseller’s sale of JJ Slick and JJ Stan, New Balance’s lost profit and Bestsellers unfair profits the remuneration and compensation is set to a total of DKK 2.5 million, of which DKK 300,000 is remuneration for the exploitation of GROUNDER HI, NUMBER 5 and the CHEVRON mark, and DKK 200,000 is remuneration for the use of the trade-mark PF FLYERS on www.jackjones.com and in the magazine “Reportage, Winter 2006”, while the rest is to cover the estimated lost sales and market disruption. The calculation of compensation and remuneration is based on the above information on the turnover exclusive VAT, Bestseller has had by selling JJ Slick and JJ Stan in Denmark and abroad.
Bestseller must pay DKK 203,100 to New Balance for legal costs, of which DKK 66,100 is court fees, DKK 12,000 for extract and material collection and the remainder for the attorney.
It is hereby decided as follows:
Bestseller A/S must recognize that Bestseller A/S’ shoes of the models JJ Slick and JJ Stan are illegal imitations of New Balance Athletic Shoe Inc.'s shoe models GROUNDER HI and NUMBER 5, and that Bestseller A/S's use of New Balance Athletic Shoe Inc.’s trademarks in Bestseller A/S's marketing material is a violation of New Balance Athletic Shoe Inc.'s trademark rights.
Bestseller A/S is prohibited to produce, import, market, sell and/or in other ways hand over or make arrangements regarding the shoes of the models and JJ Slick and JJ Stan and using New Balance Athletic Shoe Inc. 's trade-marks and trademarks that are confusingly similar.
Bestseller A/S shall deliver the shoes of the models and JJ Slick and JJ Stan, which are in Bestseller A/S's stock, to New Balance Athletic Shoe Inc. for de-struction and pay the associated costs, including transport, storage and de-struction from the products are handed over and until the destruction has oc-curred.
Bestseller A/S shall within 14 days to New Balance Athletic Shoe Inc. pay DKK 2.5 million with interest from 30th July 2007 and DKK 203,100 in legal costs. The costs are remunerated according to the Interest Act art. 8a.
Lisbet Friis Michael B. Elmer (chairman) Christian Hvidt