Wrangler Takes Crocker to the Cleaners

Wrangler Apparel Corp. is one of the leading jeans manufacturers. For the past half century, Wranglers has been using a W-shaped stitched pattern on the back pockets. The W shaped double stitching is a registered trademark.

Wranglers has billions of dollars worth of sales worldwide, and tens of millions of sheckels worth of sales in Israel, and television adverts including the sewn W on jeans are receivable via satellite in Israel. Unfortunately, however, the sewn W symbol is only registered in Israel for overalls, short coats, and shirts having a Western style (see Israel Trademark 50,909). However,

Crocker, an Israeli jeans manufacturer, decorates the back pockets of their jeans with a  sewn decoration that is arguably a 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 trademark infringement, passing off, unjust enrichment and confusing the public.

The plaintiff sued on grounds of:

  • registered trademark infringement
  • well-known mark infringement
  • passing off
  • dilution
  • unjust enrichment

In their defense, Crocker pointed out that their jeans were on sale since 1984 and  that their stitched pocket design is different.  Furthermore, Crocker obtained trademarks (nos. 101,601  and 118,244) for their stitching designs. They argued that Wrangler were estopelled from claiming trademark infringement since they had not taken advantage of their opportunity to oppose the mark.

Wrangler conducted a survey of the jeans wearing public aged 18 to 70 in face to face interviews, and then a control group on the internet. Crocker’s counsel brought Dr Mina Tzemach, a recognized Israel authority on consumer surveys to try to demonstrate that the survey was meaningless since the survey and the control group were conducted differently. Furthermore, the results, though impressive, made no reference to standard deviation. Crocker’s counsel wanted the survey to be given minimal weight.

In ruling, Judge Shaham found:

  • registered trademark infringement
  • well-known mark infringement
  • passing off
  • unjust enrichment

and decided that there was no need to go into the issue of dilution.

He also found the owner of Crocker, a co-defendant called Mr Levy directly and personally responsible since he was intimately involved in the business.

In the 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 issue an injunction against Crocker using a W symbol, to order Crocker turn over their books for inspection to Wrangler, NIS 250,000 damages and NIS 100,000 legal costs.

The Case: T.A. 1999/05 Wrangler Apparel vs. Crocker 1991 et al. before Judge Ori Shaham, 11 September 2011

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, it cannot be used 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 signs or only to those confusingly similar to their registered mark.

In his testimony, the main marketer of Wrangler in Europe and the Middle East considered the W used by Crocker would be viewed by the public as an evolution of the mark. This is a problem. Well known, or iconic marks don’t evolve. Think of Nike, Coca Cola, etc.

It is perhaps worth noting that jeans giant Levi Strauss owns several USPTO registered trademarks for its arcuate stitching design, initially used in 1873, over 70 years before Wrangler. Indeed Levi Strauss alleges that their mark is the oldest known clothing trademark in the United States. It seems to me that Wrangler’s design is at least conceptually inspired by Levi’s as, no doubt is Crocker’s. The problem is that conceptual inspiration in fashion is what drives fashion.

In the interest of pure IP research, I’ve done a little surveying of denim pockets tautly stretched accross rear buttocks and find that there are a large number of wavy / curly / pointy stitching designs. I would argue that a pair of jeans requires back pockets with ornamental stitching and rivets at strain points to be considered a pair of jeans. These are established design features with a long history, preceeding Wrangler.

I don’t think Wrangler deserves a monopoly on all letters W in all fonts and forms. This is not sufficiently distinctive to be indicative of a particular designer.

Wrangler’s mark should be interpreted narrowly. That is what the Israel Trademark Office did when allowing Crocker’s mark.

Crocker do have a question to answer on why they chose a W sign. One answer is that they didn’t. They chose a curved, bumpy stitching design that in retrospect could be considered as being a W.

The control group of the survey that found the Wrangler mark well-known and which the judge (wrongly) used to establish a case of passing off were shown a G design stitched on a rear pocket, not a W. I suggest that comparison to an omega or an M is more appropriate than a G. The W or Wrangler is not as dissimilar to a G as other widely used jean pocket stitch designs, including the older, better known and more iconic Strauss curved V.

Unjust enrichment should not be considered where there are registered trademarks. It is not an issue where there are torts or passing off or trademark infringement. The A.Sh.I.R. decision, widely discussed elsewhere in this blog, recognised unregistered design rights in cases of bad faith, but this was for exact copies not conceptual similarities. Recent case-law also seems to limit application of A.Sh.I.R.

In the tort of passing off, the issue is not one of passing off of a design feature or trademark, nor of passing off pocket stitching, but should relate to attempts to pass off the product as a whole. Crocker labeled their products Crocker which implies that they were not passing off. I therefore consider it highly unlikely that anyone purchasing the jeans thought they were Wranglers.

The issue of third parties seeing the W on the rear pocket of someone elses jeans thinking that the wearer was wearing Wrangler is, as counsel for the plaintiff pointed out, not the traditional understanding of passing off. This may be the basis for an interesting widening of the tort, but the judge ignored this issue.

In the 4 stripe Adidas case, Dr Michal Agmon-Gonen a fellow judge in the Tel Aviv court, ruled that design features inspired by those of others were not infringing. See https://blog.ipfactor.co.il/2011/01/12/west-bank-arab-prevails-against-adidas-four-stripe-cheap-training-shoes-do-not-infringe/. It does seem that there is little consistency in these rulings.

In the exchange of letters between Wrangler and Crocker, it appears that Crocker claims their pocket stitching to be different. Wrangler suggests alternative grounds of passing off; not that the purchaser would be confused, but that the public would at least temporarily confuse the brand.

In my opinion, the most promising grounds for finding Crocker at fault is dilution. Unfortunately the judge did not bother relating to this.

Wrangler requested and were awarded the right to receive details of the sales figures for Crocker’s jeans. In my opinion, this is their business only as long as they are claiming and entitled to damages based on calculation. The judge ruled an arbitrary NIS 250,000 damages so the issue is moot. In my opinion, Wrangler is therefore not entitled to the sales figures.

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