19.10.2009
In the last few days, there have been comments on various online platforms about warnings regarding trademark infringements which Jack Wolfskin has issued to suppliers on the internet platform DaWanda. While these incidents are regrettable, this is a clear-cut case of trademark infringement, to which Jack Wolfskin unfortunately has no choice but to respond with warnings.
The characteristic Jack Wolfskin paw is a protected trademark. This means that third parties may not use in the marketplace similar or identical trademarks for goods similar and identical to those offered by Jack Wolfskin. As trademark owner, Jack Wolfskin therefore has both the desire and the duty to defend the trademark against similar third party logos, as the trademark would otherwise be undermined. Jack Wolfskin examines each case very thoroughly with lawyers to determine whether or not the conditions are met for a trademark infringement. In the case of such an infringement, the company considers itself compelled to undertake proceedings in order to defend the trademark rights effectively.
The facts are as follows: various products with a paw imprint are offered on the DaWanda platform. Individual cases were scrutinised carefully by Jack Wolfskin in close partnership with solicitors. Following these investigations, only suppliers whose products genuinely infringed Jack Wolfskin’s trademark rights received warnings. Suppliers whose products featuring paw imprints bear no similarity to the Jack Wolfskin paw can naturally continue to sell their products with no objection. Furthermore, the warnings were only really issued when a supplier traded in the marketplace. As a rule, an action in the marketplace only occurs if sales within a certain volume have previously been achieved, whereas the smallest suppliers, who may sell only one or two products per year, were naturally not contacted.
Unfortunately it is also necessary to contact comparatively small suppliers with a warning and corresponding reimbursement of costs. Such small suppliers are also obliged, if they are selling their products in the marketplace, to check for trademark infringement before advertisement and sale of these products and to remove any such products from sale. This has not been done in the current cases.
If warnings are issued to comparatively small businesses, efforts will be made to keep costs as low as possible. Normally we calculate the cost of a warning letter according to the underlying object value determined by the infringed trademark. In the current cases, this was set as low as possible. The resulting costs of €991 are still relatively high for a small business. However, such a business is responsible for the occurrence of these costs, as it sold the goods which infringed the trademark and compelled Jack Wolfskin to defend the trademark.
Therefore, it is about not only a penalty fine, but the costs which have been incurred for Jack Wolfskin through the intervention of solicitors and which must always be borne by the trademark infringer in the case of a justified warning. Consequently the warning also serves as a quick and relatively inexpensive conclusion to the affair. In addition, it commonly prevents yet higher costs in the form of an intervention by the courts.
19 October 2009
JACK WOLFSKIN
Ausrüstung für Draussen GmbH & Co. KGaA
Jack-Wolfskin-Kreisel 1
D-65510 Idstein
Germany