Wrangler started the case in May, 2006. In 2004 Wrangler was confronted with jeans sold in a few Amsterdam shops bearing the word marks 'Le Temps des Cerises' and 'Japan Rags' with back pockets and signs as shown in the pictures (Wrangler refers to it as the W-shaped sign or as the drawing of a pentagonal pocket with a W-shaped stitching in the middle).

(Dogg Label jeans a, b, c)

(Dogg Label jeans d)

Dogg Label ran the shops and received a cease and desist letter from Wrangler: Dogg Label infringed Wrangler's Community trade mark rights. Wrangler also relied on two other trade mark rights for the Benelux (013616 registered since 12 March 1975 and 212068 registered since 1 April 1996; see pictures). Dogg Label denied the infringements. The parties tried to come to a settlement in 2005 but failed.

(One of Wrangler's Benelux trade marks)

Wrangler's writ of summons aimed first at obtaining an injunction -- strengthened with penalties -- against the use of the Wrangler trade mark or similar signs. Next Wrangler claimed a full report on sales, prices, profits etcetera, approved by a certified accountant. Furthermore Wrangler claimed a full compensation of damages at least amounting to the profits that Dogg Labels had earned with the sales of the jeans, and a compensation for the cost of the proceedings.

Dogg Label's first defence was that the signs it used for the jeans were not used as trade marks, but were only decorative stitches, a lotus flower model. The District Court rejects this defence: for the Court the ECJ has ruled in Adidas/Fitnessworld that a sign can fulfil different functions. It can be an indicator of origin and a decoration, but it is not evident that if a sign functions as a decoration, this occurs at the cost of the origin function. Only if the sign is conceived as a pure embellishment the public will -- logically -- not connect the sign with a registered trade mark. This is not the case here, according to the Court, because Wrangler presented a market research survey from Jes Marketing Onderzoek B.V. (a private marketing investigation company instructed by Dogg Label), in which the Court found evidence that apparently there was such an extent of similarity between the sign and the trade mark that at least a not negligible part of the public concerned finds a connection between the sign and the trade mark. According to the survey respondents were shown a folded Dogg Label jeans with the sign, clearly visible. They were asked 'What do you think of if you see this jeans?'. 12% named a trade mark and 5% immediately the trade mark Wrangler. Thus the Court finds that the sign does not function solely as an embellishment.

After the rejection of the first defence the Court goes to the question whether there is an infringement according to Article 9(1)(a) CTMR. The Court rightfully starts with the ECJ's Arthur & Felice decision that a sign and a trade mark are identical if the sign depicts all elements of the trade mark without any changes or additions, or if the sign considered in its entirity shows differences that are so minor that they could slip the average consumer's attention. Meticulously the Court investigates the trade mark and the signs and comes to the conclusion that their are differences between them, that are not so minor that they do not stand in the way to a protection according to Article 9(1)(a) CTMR. The Court defines the Community trade mark as a sign that shows two straight, interrupted lines in the shape of a double stitched 'W', while the centerpiece tips of the 'W'-legs are not on the same level as the tips on the outside of the 'W'-legs and the space between the stitches is not filled up. The Dogg Label sign concerns a leather strip that has been stitched on the back pocket with a single stitch that is not visable very well. The sign surely shows a 'W'-shape, but the outside legs of the 'W' are not designed as steep upwardly as in the trade mark, they even bow a little to the sides. Especially because of the leather sign, designed as a sort of fat line, the diffences are not minor enough.

The Court however rules against Dogg Label in so far as Wrangler's claims are based on Article 9(1)(b) CTMR: the Court applies the ECJ's criteria that the trade mark owner can successfully fight the use of a sign, if there is such a visual, auditive or conceptual similarity between the sign and the trade mark (which should be assessed globally according to the global impression of the sign and the trade mark) that there is a risk that the public concerned confuses the sign and the trade mark or the sign evokes the impression that there is a connection between the trade mark owner and the sign. All relevant circumstances should be taken into account, among others the similarity of the goods, the distinctiveness of a trade mark and its reputation.

The average consumer as defined by the ECJ in Gut Springenheide is the touchstone in this assessment. The Court does not follow the argument of Dogg Label that consumers of jeans are very well informed and critical consumers who have good knowledge of all visual elements of jeans and are not confused easily. The Court is not convinced that the average consumer of jeans has such a high level of attention.

The Court finds that even if the distinctiveness of the trade mark would be low, there is a risk of confusion. Dogg Label made an issue of the distinctiveness, not as an argument for invalidity, but as a plea that the distinctiveness of the trade mark is low, because these days all jeans have stitches on the back pockets.

Taking into account that the average consumer do not often have a possibility to compare different trade marks at the same time, as a consequence of which consumers make a comparison, starting from a imperfect image, the Court rules that the sign is highly similar to the trade mark.

Besides, the goods are found to be identical. The Court judges irrelevant Dogg Label's argument that the good are not similar, because Dogg Label aims at young fashionistas who want to buy designer jeans with a vintage look, while Wrangler aims especially at the 'cowboy consumer'. The Court follows Wranglers' viewpoint that the target groups are 'schuivende panelen' (shifting panels). Since a few years Wrangler also aims at trendy, hip youngsters.

From Dogg Label's survey it appeared above all that the 12% of respondents who were directly mentioning a trade mark when they were shown the Dogg Label jeans, 89% were thinking that the jeans were Wrangler's (68%, particularly because of the 'W'-shaped sign). The Court uses this fact as an extra argument to rule that there is a risk of confusion.

With the a, b and c sign Dogg Label therefore infringed the Wrangler trade mark. The d sign was not found to be infringing however: the overall impression of that sign is too different, because of the drooping mouth corners on the left and right side of the sign. The impression of that sign is that of an upside down seagull.

The Court reaches the conclusion that Wrangler is entitled to an pan-European injunction, restricted to use of the signs a, b and c, but the finale decision is adjourned because of Wrangler's claim for account of profits. The parties have an opportunity to give their comments on the Ondeo Nalco versus Michel Company decision of the Benelux Court of Justice, in which was decided that bad faith use could be necessary for a succesful claim for account of profits, since that case was decided after the pleadings in the Wrangler case.

As far as the claim for damages is concerned it is important to mention that the Court decides that Wrangler is entitled to damages as from the date of publication of the CTM.

To be continued...