Trade mark infringement through decorative stitching?

Can the trade mark rights of a right holder be infringed by tags affixed to jeans on which a stylised pair of trousers is depicted, the seat pockets of which are provided with decorative stitching in the form of a downward-pointing double arc? The trade mark proprietor has protected this special design of the decorative stitching as a trade mark and is now asserting claims for a prohibition against the competitor.

An American fashion company renowned worldwide for its jeans demanded that a manufacturer of women's fashion cease the distribution of jeans provided with certain tags. On these so-called hangtags or waist-tags affixed to the trousers were depicted stylised trousers whose seat pockets were provided with decorative stitching in the form of a downward-pointing double arc. This decorative stitching had been registered as a trade mark by the fashion company, which now considered its trade mark rights to be infringed. In addition to a claim for prohibition, the jeans manufacturer also asserted claims for damages determination, information, destruction as well as reimbursement of attorney's fees.

Decision of the Court

The Regional Court Hamburg (LG Hamburg) decided by judgment of 30.06.2015 (Az. 416 HKO 186/14) that the manufacturer of women's fashion must cease offering, putting into circulation or possessing for that purpose trousers with tags affixed thereto on which a trouser pocket with a downward tapering double arc is depicted in the European Union, or advertising trousers with such tags. The Regional Court Hamburg (LG Hamburg) also granted in full the asserted claims for damages determination, information, destruction and reimbursement of attorney's fees.

In its reasoning, the court stated that the use of a waist-tag on which a stylised pair of trousers with the decorative stitching on the seat pockets objected to by the trade mark proprietor is depicted constitutes a trade mark use of the trade mark registered in favour of the claimant. Whilst such a label generally serves primarily to describe the fit of the trousers, in the present case there is the special feature that within the depiction of the seat pockets, the trade mark is recognisable in the form of a downward-pointing double arc.

Conclusion

Due to its distinctive design and the intensive use of the decorative stitching, the ornamentation of the seat pocket functions as an independent indicator of origin of the American fashion company. Therefore, the use of this decorative stitching on a label of a pair of trousers already constitutes a trade mark infringement.