C & J Clark International Ltd v Trek Bicycle Corporation & Anor

                This is my judgment following the trial of an action concerning use of the sign TREK on shoes. The Claimant ("Clarks") is a substantial shoemaker based in Street, Somerset. For over 50 years it has sold the DESERT TREK shoe, and it has branded various other shoes as TREK. The First Defendant ("TBC") is a US corporation which has for almost 50 years sold bicycles and related products under the sign TREK. The Second Defendant ("TBCL" and together with TBC "Trek") is a subsidiary of TBC.

i)                  Clarks claim that Trek has in breach of the Agreement sold cycling shoes and insoles marked TREK and has infringed Clarks' registered trade marks under sections 10(1), 10(2) and 10(3) of the Trade Marks Act 1994 ("TMA"). TBC denies infringement and say that Clarks consented to the uses complained of.

ii)                TBC claims that Clarks has in breach of the Agreement sold shoes marked TREK which are "adapted for... participating in sports or fitness", a phrase that features in the Agreement.

iii)              Clarks claims that certain UK registered trade marks owned by TBC are invalid under section 47 TMA.

iv)              Trek claims that Clarks' two UK registered trade marks for TREK should be partially revoked for non-use under section 46 TMA.