On 4 October 2023 the Danish Supreme Court rendered the final decision in the long-lasting dispute between the US based Trek Bicycle Corporation and the Danish retailer T. Hansen Gruppen A/S regarding the trademarks “TREK” and “OUTTREK”.
The case was originally initiated by Trek before the Danish Maritime and Commercial High Court in 2018, and following the decision from the Maritime and Commercial High Court in 2019 Trek appealed to the Eastern High Court. The Eastern High Court upheld the decision from the Maritime and Commercial High Court in 2020, and the Supreme Court has now upheld the decision from the Eastern High Court.
The case concerned Trek’s request for injunction against Thansen’s use of the trademark “OUTTREK”, as such use in the opinion of Trek constitutes infringement of Trek’s trademark “TREK”. Trek has had Danish and EU trademark rights to TREK since the 1990’s, and Thansen began selling and marketing the OUTTREK products in 2010. Thansen had further obtained an EU trademark registration of OUTTREK TECHNOLOGY with effect from 2009.
Trek argued that TREK was a reputed trademark, that Thansen by its use of OUTTREK intended to ride on the coat-tails of TREK and benefit from its reputation, and that Thansen took unfair advantage of TREK by its use of OUTTREK. Thansen argued that TREK was not a reputed trademark at the relevant point in time in 2010, and that Thansen was not taking unfair advantage of TREK by its use of OUTTREK.
In support of its arguments, Trek had produced turnover figures for 2009-2016 and examples of press coverage and marketing of TREK. To counter this Thansen pointed out that the turnover for the most part did not relate to the relevant period, and that the marketing and press coverage was very limited in light of the period of many years it covered. The Supreme Court sided with Thansen and concluded that Trek had not document reputation at the relevant point in time in 2010, neither in Denmark nor in any other EU member state. In this aspect, the decision from the Supreme Court illustrates that it is of utmost importance for trademark owners to secure evidence for turnover and use of its trademarks on an ongoing basis.
Trek further argued that there was a likelihood of confusion between TREK and OUTTREK, and that TREK was a strong trademark i.a. due to the comprehensive and extensive use. To counter this Thansen argued that there was no risk of confusion due to the visual, phonetic and conceptual differences between the marks, and because Trek’s bikes and bike accessories was marketed and sold to a customer segment with a heightened brand awareness. The Supreme Court sided with Thansen and concluded that there was no likelihood of confusion, and put special emphasis on Trek’s special customer segment and the fact that THansen only sold the OUTTREK products in its own stores, via its own website and in a different price segment than the TREK products. In this regard, the decision from the Supreme Court underlines that specific customer segments and sales channels can have significant impact on the global legal assessment of likelihood of confusion.
In its decision the Maritime and Commercial High Court had found that Trek had lost its right to object against Thansen’s use of OUTTREK due to acquiescence. The Supreme Court did not consider the question of acquiescence as it found that Thansen’s use of OUTTREK did not constitute infringement of Trek’s rights.
The decision from the Supreme Court is accessible here (in Danish).
The attorneys Janne Glæsel and Johan Leonhard from Nyborg & Rørdam law firm represented and assisted Thansen in the matter. Do not hesitate to reach out to one of our specialists within intellectual property law if you have questions regarding trademarks or other types of IPR.