Trade mark not infringed

Case no. BS-10171/2021-HJR
Judgment delivered on 4 October 2023

Trek Bicycle Corporation
vs.
T. Hansen Gruppen A/S

Trek Bicycle Corporation (TBC) have held the registered trade mark right to the word TREK for bicycles and bicycle frames in Denmark since 1992. TBC has also held the EU trade mark right to the word TREK for cycling clothing since 1999, as well as the EU trade mark right to the word for, among other things, bicycles, bicycle parts and bicycle accessories since 2007. Since around 2003, TBC has used the word and figurative mark TREK in Denmark for the marketing of bicycles and bicycle equipment, including clothing, shoes and helmets.

Since 2010, T. Hansen Gruppen A/S (T. Hansen Gruppen) has sold different articles of clothing, including cycling clothing and shoes, bicycle and skater helmets, running clothing and skiwear under the word and figurative marks OUTTREK and OUTTREK TECHNOLOGY. T. Hansen Gruppen has not marketed bicycles under these marks.

The case before the Supreme Court concerned, firstly, whether the brand name TREK was well-known and, thus, covered by the extended protection in Section 4(2)(3) of the Danish Trademark Act and Article 9(2)(c) of the Trade Mark Regulation before T. Hansen Gruppen started using the marks OUTTREK and OUTTREK TECHNOLOGY in 2010

The Supreme Court stated that TBC had failed to prove that the trade mark TREK was well-known in Denmark or in other EU member states before T. Hansen Gruppen started using the marks OUTTREK and OUTTREK TECHNOLOGY in 2010.

The Supreme Court agreed that, based on an overall assessment, there was no basis for assuming that there is a likelihood of confusion on the part of consumers, including that there is a likelihood of association between T. Hansen Gruppen’s products under the marks OUTTREK and OUTTREK TECHNOLOGY and TBC’s under the trade mark TREK, cf. Section 4(2)(2) of the Trade Mark Act or Article 9(2)(b) of the Trade Mark Regulation. The Supreme Court referred in this regard to the High Court’s statement that TBC’s products under the trade mark TREK are sold to full-time professional and semi-professional athletes as well as to recreational cyclists who must be assumed to have a strong knowledge of the brand. In addition, T. Hansen Gruppen’s products sold under the marks OUTTREK and OUTTREK TECHNOLOGY are only available in the company’s own stores and on its website. The products are sold alongside other, often inexpensive, products, and they are only marketed in T. Hansen’s own catalogues and in television advertisements for T. Hansen.

The High Court had reached the same conclusion.