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Boomerang for Diesel

July 2019. Retail clothing company Diesel’s frontal assault on jeans sold by competitor Calvin Klein has bounced back on it like a boomerang. On 22 May, the District Court in The Hague not only rejected Diesel’s request for a ban on the sale of Calvin Klein jeans, but ended up declaring Diesel’s own Benelux trademark registration to the ‘coin pocket’ label invalid.

Left: Diesel jeans with its ‘coin pocket’ label, and right: Calvin Klein’s ‘coin pocket’ label

Position mark

Diesel claimed that Calvin Klein had infringed its trademark rights and copyright to the design of a label placed in a specific position on the ‘fifth pocket’ of a pair of jeans, commonly known as the ‘coin pocket’. Diesel even has a Benelux trademark registration for this ‘position mark’.

Trademark registration no. 1016431: Diesel’s ‘coin pocket’ label with a description of the trademark

Not distinctive

However, the Court in The Hague rejected Diesel’s claims in no uncertain terms, ruling that its trademark wasn’t distinctive. Position marks, where the trademark and the product are taken together, are (as shape marks) governed by very strict requirements concerning distinctiveness, the Court noted. Diesel’s trademark, it continued, was however little more than a simple geometric shape placed in a specific position on a pair of trousers. Moreover, Calvin Klein had shown that many other brands also placed a label or decorative elements on their ‘coin pockets’ (Moschino, Boss, Superdry and Lee Cooper).

Other ‘coin pocket’ labels

Trademark invalid

And because Diesel had also failed to demonstrate that its label had acquired sufficient distinctiveness through long-term use, the Court upheld Calvin Klein’s counterclaim and declared that Diesel’s Benelux trademark registration was invalid. Now that’s what you’d call a boomerang! The Court also threw out Diesel’s copyright claim, pointing out that even if it were accepted that placement of the label was covered by copyright, the shape of the Calvin Klein label was in any case sufficiently dissimilar.

Not unexpected?

It’s certainly a heavy blow and a painful defeat for Diesel. But we can’t imagine this setback will have come as a complete surprise to the company. After all, it’s well known that distinctiveness in shape marks is governed by strict criteria. So it’s little wonder the Court took this stance over this kind of position mark, where the trademark must be seen together with the product itself. Incidentally, we do feel that the European Court’s strict view on the distinctiveness of shape marks goes a bit too far, but unfortunately those are the rules.

Bas Kist