Customers regularly ask whether Jack Wolfskin copied the pawprint from the German daily newspaper taz. The fact that this is not the case is illustrated by the fact that the Jack Wolfskin pawprint and the taz pawprint are based on two independent designs as well as by the fact that they are legally intended for use in two completely different product areas:
- In the case of taz, it was to be used for the newspaper and for anything to do with reporting and the press
- In the case of Jack Wolfskin, it was to be used for goods and services linked to products from the outdoor industry.
It is worth considering in more detail the sequence of events in the dispute in order to recognise that it was never in our interest to contest the use of the pawprint symbol by taz or to damage its business. It was more to do with defending our trademark rights to use the pawprint in our product segments.
In the beginning, there was not any tension or difference of opinion between Jack Wolfskin and taz with regard to the use of the relevant pawprint symbols. Both companies had used their own pawprint symbol for their business segments – i.e. Jack Wolfskin had used it for apparel and outdoor equipment, and taz had used it for its daily newspaper and other media.
We originally registered the pawprint for products in our business segment (including apparel and tents) in 1982 as a brand with the German Patent and Trade Mark Office, without this appearing to be a problem for taz. In the first few years, there was even a cooperative business agreement between us and taz. As can be seen in this advert from 1988, taz originally used Jack Wolfskin products as prizes for campaign advertising.Only later, once Jack Wolfskin had been using the pawprint for over ten years, did taz then register the following two pawprint symbols as a brand with the German Patent and Trade Mark Office in 1994.
The registrations not only affected the goods in the taz business segment that would have been indisputable, but also a whole range of products that fell under our core product range and for which we had already received trademark protection ten years previously. After the taz trademark registrations had been published, we had to react in order to protect our trademarks and we immediately entered into a dialogue with taz in order to bring about a mutual agreement. However, these discussions did not result in an agreement.
2. Decision of the Hamburg Higher Regional Court on 19 June 2002
After negotiations regarding trademark registrations by taz had failed, Jack Wolfskin filed a suit against taz at the Berlin Regional Court on 19 December 1995 (ref. 97 O 284/95). During the suit, settlement negotiations were restarted, which aimed at settling out of court. The resultant legal action lasted several years. When a mutually acceptable solution had still not been found, the legal dispute was brought before the Regional Court in Hamburg.
On 2 August 1999, Jack Wolfskin filed a suit before the Hamburg Regional Court to define the circumstances of trademark registrations from 1994. The suit was directed against the registration and use of the pawprint symbol by taz in Jack Wolfskin’s core area of business and against its registration for the following products:
“bags, clothing, in particular T-shirts, sweatshirts, headwear”.
With its ruling on 17 November 2000, the Hamburg Regional Court predominantly found in favour of Jack Wolfskin. Both parties lodged an appeal against the ruling of the Hamburg Regional Court. The Hamburg Higher Regional Court largely confirmed the ruling of the Hamburg Regional Court on 19 June 2002. taz lodged a complaint against the ruling by the Hamburg Higher Regional Court with the Federal Court of Justice with regard to the non-admission of the revision. The Federal Court of Justice rejected the complaint by taz regarding the non-admission of the revision with its ruling on 20 March 2003.
During the proceedings, taz maintained that it had trademark protection for the goods concerned that went back further, and that it owned the copyrights. The Higher Regional Court did not pursue either case.
The Higher Regional Court made the following statement in its ruling dated 19 June 2002 regarding taz’s trademark rights for bags and umbrellas:
“The defendant [taz] incorrectly maintains that it has prior trademark rights on the pawprint symbol. According to the registration dates of their brands, the plaintiff [Jack Wolfskin] already had prior rights for the products listed in the application (except for games, see above) dating back to 1986. For the period prior to this, the defendant asserted its usage rights for the pawprint symbol on bags and umbrellas as defined under points 1 a aa and bb of the suit, but this is completely unsubstantiated. This submission does not extend to the acquisition of trademark rights via secondary meaning, according to Section 25 German Trademark Law (WZG), as was. Any potential secondary meaning that is acquired subsequently does not apply retroactively (Baumbach/Hefermehl, Warenzeichen, 12th edition, Section 25, Paragraph 45).”
The Hamburg Higher Regional Court also made it clear that no copyright existed to the benefit of taz with regard to the two-dimensional depiction of a pawprint, and made the following statement:
“The defendant [taz] also incorrectly maintains that it has prior copyrights on the pawprint symbol. The ruling of Hamburg Regional Court stands in this regard, too. The pawprint symbols registered as a trademark and used by the defendant are generally deemed distinctive enough to constitute a brand (see above), but do not demonstrate sufficient originality to be acknowledged for protection under German copyright law (Section 2, Para. 2 German Copyright Act (UrhG).”
During the entire court proceedings, both in the first and second instance, there were repeated attempts to come to a mutual agreement on the clash of trademark rights. Specifically, right up to the ruling, Jack Wolfskin extended taz an offer that would have enabled taz to use the pawprint symbol with the additional lettering “taz” even within our core product area, and thus it would be able to continue to use the mark for the purposes of advertising its own printed materials in the segment in which Jack Wolfskin had significantly older trademark rights. Despite this, no mutual agreement could be reached.
As a result of the final judgement by the Hamburg Higher Regional Court dated 19 June 2002, taz was also obligated to provide information regarding the extent to which its trademark rights had been breached. When taz did not respond to this request, we were expected to pursue this duty to provide information before the courts. With its ruling of 11 February 2003, Hamburg Regional Court continued to request information from taz under threat of being fined in the event of non-compliance. taz then provided the information requested. However, Jack Wolfskin declined to assess and implement the claim for damages as was ruled their right in the judgement of the Hamburg Higher Regional Court.
3. taz appeal against a pawprint used by Jack Wolfskin
taz filed a complaint with the German Patent and Trade Mark Office in May 2007 with regard to the Jack Wolfskin “pawprint” design mark DE 3940831 with the aim of completely expunging the design mark. On 23/10/2008, the German Patent and Trade Mark Office rejected the appeal by taz.
Since 2008, there have been no further disputes between Jack Wolfskin and taz, either in court or out of court.