High Court finds Trek infringed Clarks footwear marks

A High Court judgment has clarified the boundaries of a 2001 co-existence agreement between footwear maker C & J Clark International and cycling specialist Trek Bicycle Corporation. The court held that Trek breached the agreement by selling TREK-branded cycling shoes and insoles in the UK. Because those goods fell within the ordinary meaning of “footwear”, the sales also amounted to trade mark infringement under sections 10(1) and 10(2) of the Trade Marks Act 1994. Clarks’ registered marks were found to cover the relevant goods, and the average consumer would be likely to be confused. The judge rejected Trek’s arguments that specialist cycling shoes formed a distinct category outside the agreement and dismissed claims of informal consent. In a mixed outcome, the court also found that Clarks had itself breached the agreement by selling certain TREK-marked shoes adapted for sports or fitness, and it invalidated Trek’s later UK registrations to the extent they covered footwear.

Small-business owners should review any co-existence agreements regularly as product categories evolve and obtain specialist advice before expanding into adjacent goods.