Wrangler takes Crocker to the cleaners

For the past half-century, Wrangler has been using a W-shaped stitched pattern on the jeans’ back pockets.

Unfortunately, the sewn W symbol is registered as a trademark in Israel only for dungarees, short coats, and shirts having a Western style (see Israel Trademark 50,909).

Crocker, an Israeli jeans manufacturer, decorates the back pockets of its jeans with a sewn decoration that has a curved W shape.

Noting that Wrangler had filed previous aggressive actions against other jeans manufacturers Lucky and Kenvelo, and that a similar mark was used in a similar place, counsel for Wrangler claimed registered and well-known trademark infringement, passing off, unjust enrichment, dilution and confusing the public.

In its defence, Crocker pointed out that its jeans were on sale since 1984 and that its pocket design is different. Furthermore, Crocker obtained Israel trademarks (nos. 101,601 and 118,244) for its pocket stitching designs. Crocker argued that Wrangler was estopped from claiming trademark infringement since it had not taken advantage of the opportunity to oppose the mark and sufficient time had passed that the Crocker mark was itself established.

Wrangler conducted a survey of the jeans-wearing public aged 18 to 70 in face-to-face interviews, and then with a control group on the Internet, to establish that the mark was well known and to establish a case of passing off. Crocker’s counsel argued that the survey was meaningless since the survey and the control group were conducted differently.

"THE QUESTION HERE, WHICH THE JUDGE SEEMS TO HAVE MISSED, IS WHETHER WRANGLER CAN HAVE RIGHTS TO DIFFERENT WAVY LINE,
W-LIKE SIGNS."

In ruling, Judge Shaham first recited the basic law, philosophy and case law of the various torts, then applied his analysis of the specific case and went on to find trademark infringement, passing off and unjust enrichment, thereby deciding that there was no need to go into the issue of dilution. He also found the owner of Crocker, a co-defendant named Mr Levy, directly and personally responsible since he was intimately involved in the business.

Judge Shaham issued an injunction against Crocker using a W-like symbol, ordered Crocker to turn over its books for inspection to Wrangler, and awarded NIS 250,000 damages and NIS 100,000 legal costs.

Comments

Wrangler’s registered trademark in Israel did not cover trousers in general nor jeans in particular. There was, therefore, no registered trademark infringement.

If a mark is sufficiently well-known to be considered a well-known mark under the Paris convention, one has grounds to sue for usage in complementary classes and for other goods. The question here, which the judge seems to have missed, is whether Wrangler can have rights to different W-like signs, or only to those confusingly similar to its registered mark.

The main marketer of Wrangler stated that the public would consider the W used by Crocker as an evolution of its mark. This is a problem. Well-known marks don’t evolve. It is perhaps worth noting that jeans giant Levi Strauss owns USPTO-registered trademarks for its arcuate (curved) stitching design, initially used in 1873, more than 70 years before Wrangler.

It seems to me that Wrangler’s design is at least conceptually inspired by the Levi Strauss one as, no doubt, is Crocker’s. The problem is that conceptual inspiration in fashion is what drives fashion.

I don’t think Wrangler deserves a monopoly on all letters W. Wrangler’s mark should be interpreted narrowly, as the Israel Trademark Office did when allowing Crocker’s mark.

The control group of the survey that the judge used to establish a case of passing off considered a G design stitched on a rear pocket, not a W. I suggest that comparison to an omega or an M is more appropriate.

In the tort of passing off, the issue is the product as a whole, not passing off of a trademark or pocket stitching. Crocker also labelled its products ‘Crocker’.

Unjust enrichment should not be considered separately where there are registered trademarks. In my opinion, the most promising grounds for finding Crocker at fault was dilution. Unfortunately the judge did not bother relating to this.

Dr Michael Factor is a partner at JMB, Fa©tor & Co. He can be contacted at: mfactor@israel-patents.co.il