Ashfords has recently acted in a High Court intellectual property litigation between C. & J. Clark International Limited, the owners of the 'Clarks' brand, and US-based bicycle manufacturer, Trek Bicycle Corporation and its UK subsidiary Trek Bicycle Corporation Limited, both together Trek. Judgment was handed down on 19 March 2026.
The case is a significant ruling in a long-running trade mark and contractual dispute between the parties. The dispute centred on a co-existence agreement made between the parties 25 years ago in 2001 and also whether Trek infringed Clarks' registered trade marks for the word mark 'TREK'. The court found that both sides had breached different aspects of the agreement, with the court also ruling on a trade mark infringement claim and the validity of several later registrations.
The ruling brings clarity to a longstanding question at the centre of the case: who can use the name 'TREK' on footwear and whether cycling shoes should be considered 'footwear'?
This article explores the recent High Court judgment of the case and highlights the court’s findings on breach of contract, trade mark infringement and validity. We also provide key takeaways for brand owners managing coexistence agreements.
Clarks has sold footwear under the TREK name for over fifty years. Trek, meanwhile, has used TREK for nearly five decades in relation to bicycles, cycling apparel and other cycling-related products.
In April 2001, the companies agreed a worldwide co‑existence arrangement to avoid consumer confusion. Under the agreement:
For nearly fifteen years, the agreement operated without controversy. However, from 2016 onwards, Trek began exploring the possibility of expanding its TREK brand onto cycling shoes and the two parties entered discussions about amending the agreement or collaborating on joint footwear products. These talks eventually escalated into formal litigation.
Clarks alleged that Trek breached the agreement by launching TREK‑branded cycling shoes and insoles in early 2024. Trek argued it had obtained oral consent for such use during a meeting in 2018, claiming a Clarks executive had indicated that such use would not pose a conflict and had even gifted a desert Trek shoe last as a symbolic gesture of agreement. Furthermore, Trek argued that upon construction of the agreement, the term 'footwear' was not to include cycling shoes given Clarks do not operate in that sector.
The court rejected Trek’s argument and concluded that no consent was given. The alleged consent was too vague and informal to override the written contract. Furthermore, the court held that at the point of sale of the agreement, there was not sufficient evidence to show that the parties intended for 'footwear' to not include cycling shoes, particularly as Trek were not selling 'TREK' branded cycling shoes at the time of the agreement, albeit they were selling third-party cycling shoes, such as Nike. Accordingly, Trek’s sale and advertising of the cycling shoes breached clause 6 of the agreement which expressly prohibited Trek from using TREK 'in relation to footwear'.
Clarks also claimed that Trek had breached the agreement over the sale by Lidl of 'Lidl‑Trek' team‑branded trainers and slippers in 2025. This merchandise was being used by Lidl to promote the Lidl-Trek cycling team for the Tour de France in 2025. The 2001 agreement included a clause which stated that the agreement was to bind licensees and Clarks argued that Trek Bicycle Corporation should be liable for a Lidl's sale of the merchandise.
Although Trek denied placing the footwear on the market, the court held that Lidl was acting as an affiliate or licensee for the purposes of the agreement. As a result, Trek was responsible for Lidl’s TREK‑bearing footwear which also breached clause 6.
Clarks further alleged breach relating to Trek’s 2023 opposition to a Clarks trade mark application in China. The court dismissed this claim on the basis that Clarks itself was in breach of the agreement at the time, meaning Trek’s obligation not to object was temporarily suspended.
Trek counterclaimed that Clarks had breached the agreement by selling shoes under the TREK name that were 'adapted for participating in sports or fitness'. Clarks maintained that its TREK footwear remained casual, outdoor or 'athleisure' shoes, not sports or fitness products. However, internal Clarks marketing materials and design briefs indicated that several TREK models were promoted as suitable for running, training or active use.
The court reviewed a number of models and found that four of them were indeed adapted for sport or fitness and therefore breached the agreement.
Clarks also brought a trade mark infringement claim. Since Trek’s use of TREK on cycling shoes was not authorised and the goods were identical to those covered by Clarks’ registrations, the court found infringement under sections of the Trade Marks Act 1994:
Clarks' held registrations for 'TREK' protecting 'footwear'. Trek argued that specialist cycling shoes were not identical pursuant to section 10(1) of the Trade Marks Act 1994. Furthermore, with regards to section 10(2), Trek argued that cycling shoes were not similar to footwear and regardless, consumers would not be confused given the clear difference in the types of footwear the parties were selling.
Trek’s arguments based on consent, honest concurrent use and the alleged absence of confusion were rejected. However, Clarks’ infringement claim concerning Lidl‑Trek team products failed, as Trek had not played a sufficiently direct role in the UK marketing of those shoes.
Clarks' brought an infringement claim under section 10(3) (reputation and unfair advantage) of the Trade Marks Act 1994 but the court also rejected Clarks’ claim, finding Trek was not attempting to ride on Clarks’ reputation but simply expanding its own cycling brand.
Trek sought partial revocation of Clarks’ TREK registrations for non‑use, claiming that their broad specification for 'footwear' should be narrowed given Clarks do not use it for cycling shoes. The court rejected this argument, holding that Clarks had used the TREK mark on a sufficiently broad range of footwear and cycling shoes should fall into the class 25 category.
Conversely, several Trek trade marks registered between 2017 and 2018 were held invalid for footwear, due to conflict with Clarks’ earlier rights. The court did not find those applications were made in bad faith.
Trek argued that if the agreement is interpreted to stop them from bring revocation or invalidity action against Clarks' registered trade marks or entering into the cycling shoes market, then this would be a restraint of trade. Trek argued that there is no confusion or deception with regard to the sale by Trek of its cycling shoes and the agreement prevents the sale of its TREK cycling shoes worldwide.
The court rejected these arguments, finding that Trek may challenge Clarks' registered marks and that the agreement did not stop Trek from selling cycling shoes worldwide as it could still do so under its other brands, e.g. Bontrager.
The case was complex, involving various legal issues. Overall, the decision serves as a reminder that coexistence agreements must be maintained, revisited and, where necessary, renegotiated as businesses diversify. It also highlights the courts’ reluctance to allow informal discussions or sector‑based assumptions to override clear written terms.
For brand owners, the case illustrates both the value of early rights in broad product categories and the risks of expansion without revisiting long‑standing contractual boundaries.
For further information, please contact our intellectual property team.
