Managing Intellectual Property

D Jacobson & Sons Limited Vs Globe GB Limited & Globe Europe SAS Akanksha Jha 129278082 Aarthi Hariharan 129272004 Sneha Iyer 129278072

Introduction
Extent to which a manufacturer can claim complete

monopoly over a trademark.

Extent to which it is a mere matter of design opposed to a

badge of origin
Claimant: D Jacobson & Sons Ltd (Jacobson) Defendant: Globe GB Limited and Globe Europe SAS

(together Globe)
The Case: Jacobson claims that Globe has infringed

Jacobson's registered trade mark for its Wing Flash logo by using the marking on Globes shoes. Globe has also passed off its footwear as Jacobsons
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Parties Involved - Claimant

GOLA - An anagram of the word GOAL - a British

sporting goods manufacturer started in 1905

Wing Flash logo was registered under the UK Mark in

1979
D Jacobson & Sons Ltd founded 1982

specialised in designs, imports, selling and exports of all types of ladies', men's and children's footwear
Bought Gola in 1996 along with all the Goodwill and

IP.
Jacobson registered the Wing Flash Logo for a
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Community Trademark in 2000

UK Mark and Community Trademark

UK Mark registered Community

by Gola

Trademark registered by Jacobson

Parties Involved - Defendant

Globe GB Limited and Globe Europe SAS

together formed Globe started in 1990 Importer and seller of footwear in UK Three particular designs- Globe Finale, the Globe Wedge and the Globe Motto had a stripe on the side Globe Side Design

Trade Mark Act 1994, directive and regulation

Trade Mark can be represented graphically,

capable of distinguishing goods or services of one undertaking from those of other undertakings
Consist of words (including personal names),

designs, letters, numerals or the shape of goods or their packaging

CTM governed b regulation
UK Mark-governed by directive
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Jacobsons Complaint
Globe had wrongly infringed upon Jacobsons UK

Mark and the CTM-Gola Trademarks.

Globe Side Design was very similar to the Gola

Trademarks
Would cause a false association between the

Globe and Gola brand

Backed claim by article 5 rights conferred by
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a trademark and article 9 rights conferred by a community trademark

Globes Case
Conceded that it had imported and sold the

Finale, Wedge and Motto design of shoes. claimed that the Gola Trade Marks were invalid backed the claim with UK Mark was invalid because its registration was contrary to Section 3(1)(a),(b),(d) Absolute grounds for refusal of registration Globe claimed that the CTM is, and has been at all material times, invalid because it is registered contrary to Article 7 (1)(a), (b) and (d) of the Regulation.
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The Survey
Participants belonged to

Great Britain aged between 20-40 years. Participants consisted of two groups
T sample 563 in number F sample 567 participants

Results

31% - something was present in the shoe that indicated the brand of the shoe T sample -11% correctly identified Gola F sample -2 people identified Globe correctly

Validity of registration
Arguments made by Globe: The protection sought by Jacobson under trade mark law for the
Wing Flash logo is not protecting an origin identity, but protecting a design. Customers have to be educated about the design. The absence of a branding manual for Gola.

Arguments made by Jacobson:

If a brand wished to promote itself on a shoe, placing the name of the brand is difficult and will be of small print For trainers, the design on the side of the shoe is important. Consumers look at the side of shoes and the top of shoes for indication of the brand.

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Infringement
Globe denies infringement on the following grounds:
The shoes do not bear a sign which is identical to the

Gola Trade Marks. Gola Trade Marks do not function as trademarks. The Globe Side Design does not function as a badge of origin. There is no likelihood of loss or damage to Jacobson. Globe Side Design is merely a decoration Despite selling the shoe for long, Jacobson did not 11 present any evidence of confusion in the customers

Passing off and conclusion

Final Judgement
Wing Flash logo is identified by many with the Gola

brand.
Globe Side Design on Globe's shoes misrepresents

to the public that Globe's shoes are Gola shoes.

A risk on Jacobson's goodwill since Jacobson is

unable to control Globe's use of the Globe Side design on the Globe shoe.

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Thank You

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