On 30 May 2012 the Danish Supreme Court pronounced an interesting judgment in a case concerning imitation of shoes and awarded New Balance a larger compensation than what is normally awarded in such cases. The judgment is an affirmation of the Maritime and Commercial Court’s judgment from 2010. The judgment is a clear signal that Danish Courts – under the right circumstances – are willing to award economic compensation of a not inconsiderable amount.
According to the judgment, the clothing company Bestseller has imitated two different shoe models which were formerly marketed by New Balance. At an earlier stage, New Balance had tried to obtain a trademark registration of their sole and shoe toe, but both the Danish PTO and OHIM rejected these applications. Therefore, it is not a question about a trademark infringement of a sole and a shoe toe. On the contrary, it is a question about an infringement of New Balance’s trademark CHEVRON and PF FLYERS and about slavish imitation of the shoes according to the rules of the Danish Marketing Law.
In the present matter, New Balance has stated that one of their shoes is a re-design of one of their previous models and that the other shoe is a modern version of a classic shoe. They have argued that the shoes have a history and that among other things it is a question of well-considered details, well-defined proportions and elegant appearance as well as a deliberate and characteristic choice of material. According to the Court those exact conditions are decisive for their conclusion that New Balance’s shoes are characteristic and they also express an independent creativeness to such an extent that they are protected against counterfeit according to the Marketing Law §1. As a matter of fact, the Court finds that Bestseller’s shoes are slavish imitations of New Balance’s shoes, in spite of the fact that a few details on one of the imitated shoes are not identical with, but have a strong resemblance to, the original.
The Court finds it proved that Bestseller have produced their shoes with New Balance’s shoes as models and that Bestseller have had the intention to seize upon the design of the original shoes and to bring counterfeit shoes to the market. In addition, the Court points out that Bestseller, with their knowledge of the market, including the trend-setting designs, is the closest to bear the risk that it is a question of an imitation. Thus, the Court states that the fact that the shoes are being produced in China by a sub-contractor does not exempt a company from responsibility, when the product is sold in Denmark.
After a general assessment the Danish Maritime and Commercial Court set the compensation and remuneration to 2.5 million Danish Kroner. To this must be added the costs at around 203,000 Danish Kroner. The Supreme Court affirmed this judgment with an additional payment of 256,000 Danish Kroner in costs. In total, the compensation, remuneration and costs amount to around 3 million Danish Kroner. This is a quite larger compensation than what has typically been given in previous cases.
My opinion is that the amount of the compensation is closely related to the specific existing circumstances, namely especially the obvious intention and that it was a question about a completely slavish imitation of the two models of re-designed, trend-setting shoes as well as an infringement both according to the Trademark Law as well as the Marketing Law. I am pleased to see that the Danish Maritime and Commercial Court and the Supreme Court in this case have sent a strong signal by awarding a large economic compensation.
Henriette V Rasch, Attorney at Law
