Decision: C. & J. Clark International Ltd v Trek Bicycle Corp[2026] EWHC 659 (ChD) Court: High Court, Intellectual Property List, Intellectual Property Enterprise Court (IPEC)
Judge: Ian Karet OBE
Decision: Here
Issue: Registered Trade Mark Co-Existence Agreements

Published: 13 April 2026
Authors: Eloise Ryan

Introduction

In C. & J. Clark International Ltd v Trek Bicycle Corp, the Intellectual Property Enterprise Court has considered the scope and effect of a long‑standing trade mark co-existence agreement and its interaction with claims for trade mark infringement, invalidity and non‑use, in the context of the parties’ evolving commercial activities in footwear and sports goods. The case provides detailed guidance on contractual construction in trade mark co-existence agreements.

Background

Clarks is a well‑known UK footwear manufacturer, having sold shoes under its TREK mark, including DESERT TREK, for over fifty years. Trek is best known for bicycles and cycling equipment, having used its TREK mark in relation to cycling clothing for decades.

The dispute centred on a global co-existence agreement entered into in 2001. The agreement was intended to preserve the status quo between the parties, its key features including:

• Trek was permitted to use TREK for cycling‑related clothing, “but not including footwear” (clause 6 of the agreement)
• Clarks was permitted to use and register TREK for footwear, clothing and headgear, provided it did not use the mark on goods” adapted for wear when cycling, commemorating cycling events or participating in sports or fitness’” (clause 3 of the agreement)
• each party agreed that the agreement should “bind and shall inure to the benefit of the respective affiliates, licencees, assigns and successors in business of the parties hereto” (clause 14)
• each party agreed not to challenge the other’s registrations within the agreed fields (clauses 1, 2, 4 and 5 of the agreement)
• the agreement was worldwide, unlimited in time, and binding on affiliates and licensees (clauses 11 and 14 of the agreement)

Issues

Since the agreement was concluded, each party had gradually encroached into the other’s field. By trial, the court identified the following principal issues to be determined:

• whether Trek breached clause 6 of the agreement and infringed Clarks’ registered trade marks under sections 10(1), 10(2) and 10(3) Trade Marks Act (“TMA”) by selling TREK‑branded cycling shoes and insoles
• whether Clarks breached clause 3 of the agreement by selling TREK‑branded footwear adapted for sports or fitness
• whether Clarks consented to or waived its rights in relation to Trek’s conduct in discussions between the parties in 2018
• whether Trek was in breach of clause 6 of the agreement as a result of Lidl’s sale of LIDL-TREK shoes
• whether Trek’s UK trade marks covering footwear were invalid under sections 47 TMA
• whether Clarks’ TREK registrations should be partially revoked for non‑use under section 45 TMA

Decision

Applying Wood v Capita [2017] UKSC 24 and Sara & Hossein Holdings v Blacks Outdoor [2023] UKSC 2, the judge emphasised that co-existence agreements must be interpreted objectively and as a whole. The purpose of the agreement was to preserve a clear commercial divide between the parties’ footwear and cycling businesses. Addressing each of the issues above:

• the court rejected Trek’s argument that the phrase “but not including footwear” did not prohibit sales of shoes. “Footwear” was given its ordinary meaning, covering shoes and boots, including specialist cycling shoes. The agreement did not distinguish between different categories of shoes. It followed that the court held that Trek infringed Clarks’ registered TREK marks by selling cycling shoes under section 10(1) and 10(2) TMA. On section 10(3), although Clarks’ marks were found to have a reputation, the court held there was no unfair advantage, dilution or tarnishment. Trek was developing its own cycling brand rather than riding on Clarks’ coat‑tails
• the court held that the phrase “adapted for wear when cycling, commemorating cycling events or participating in sports or fitness” in clause 3 of the agreement meant “suitable for”, without requiring specialist technical adaptations. Whether footwear fell within that description depended on factors such as marketing, design briefs, materials, appearance and consumer messaging
• as to consent or waiver, Trek argued that a 2018 meeting amounted to Clarks consenting to Trek’s use of TREK on cycling shoes. The court rejected this: at most Clarks’ representative had suggested that the issue “should not be a problem”, which fell short of clear consent, particularly in light of the contract’s formality and global scope
• with regard to Lidl’s sale of “Lidl‑Trek” trainers and slippers (in connection with the professional cycling team it sponsored with Trek), although Trek argued these were third‑party acts, the court held that Lidl was a licensee for the purposes of the agreement. As clause 14 of the agreement rendered Trek responsible for licensees’ acts, sales of Lidl‑Trek footwear therefore breached the agreement
• turning to Trek’s allegation that Clarks breached the agreement by expanding the TREK brand into sports and fitness footwear, while the court conducted that legacy outdoor shoes such as Wave Trek were permitted, several newer “ATL TREK” models were found to be adapted for sports or fitness and therefore in breach. The court placed significant weight on Clarks’ internal product documents, marketing language and categorisation of shoes as “sports” or “sport active”
• on validity and revocation of the trade marks, Trek’s counterclaim for partial revocation of Clarks’ TREK marks for non‑use failed. Clarks’ use on a wide range of footwear, including sports and fitness‑suitable shoes, was sufficient. Several Trek registrations covering footwear were declared invalid under section 47 TMA due to conflict with Clarks’ earlier marks. However, bad faith allegations against Trek were rejected. Filing applications covering footwear was not inconsistent with the agreement and did not fall within recognised categories of bad faith
• Defences of consent, honest concurrent use and statutory acquiescence failed

Conclusion

Overall, the court concluded that:

• Trek infringed Clarks’ trade marks under sections 10(1) and 10(2) TMA by selling TREK‑branded cycling shoes and insoles, but not section 10(3) as there was no unfair advantage, dilution or tarnishment
• Trek breached the co-existence agreement both by selling TREK‑branded cycling shoes and through Lidl’s sales of team‑branded footwear
• Clarks also breached the agreement by selling certain TREK shoes adapted for sports or fitness
• Trek’s UK registrations covering footwear were invalid, while Clarks’ trade marks remained intact

Comment

The judgment provides three practical takeaways for those drafting co‑existence agreements:

• define your “no‑go zone” precisely. “Sports,” “fitness,” and “footwear” sound obvious until the market evolves and athleisure makes everything “multi‑purpose.”
• put variations in writing. If your position is “we agreed it over coffee in 2018,” expect the court to ask for the document trail.
• don’t forget about licensees. If the agreement binds affiliates/licensees, your partner’s promotions can become your problem.