Adidas did not suffer trade mark dilution, says Advocate General

The sportswear giant took UK company Fitnessworld Trading Ltd to court over clothing being sold in the Benelux countries. It fitness clothes included two parallel stripes on either side seam, in contrasting colour to the clothes themselves.

Adidas claimed that Fitnessworld was in breach of its own well-known trade mark of three parallel stripes.

The Netherlands district court, in which the action was originally brought, agreed with adidas and banned Fitnessworld from selling the products in the Benelux countries as well as requiring it to turn over its profits from sales of the clothes.

However, the smaller company won support from the Regional Court of Appeal, which dismissed adidas' claims in their entirety, stating that there was no confusion as to which product was manufactured by adidas and that:

"the stripe motif of two vertical parallel stripes on the side seams, contrasting with the background colour, has over the years been regularly used in the Netherlands to embellish (sports) clothing. It will therefore not do for adidas, which has chosen a triple-stripe motif as its trade mark, to attempt to monopolise the stripe motif."

Adidas appealed to the Netherlands Supreme Court of Appeal, which put the action on hold while it referred two technical legal questions to the European Court of Justice on how to interpret the EU's Trade Marks Directive.

The ECJ was asked whether the relevant provision of the Directive covered infringing marks on goods similar to those produced by the trade mark holder, or only on goods that were not similar. Secondly, the court was asked whether the use of decorations could amount to trade mark infringement.

Advocate General Jacobs has now issued his opinion on these questions, and the European Court of Justice will issue its verdict towards the end of this year. The Advocate General's opinion is highly influential and usually followed by the Court.

In essence, the Advocate General has said that a trade mark owner is entitled to seek protection for the use of signs or marks contravening his trade mark on any type of goods or service – whether these goods or services are similar to his own or not.

He then confirmed that the notion of similarity is "to be assessed on the basis of the degree of sensory or conceptual similarity between them."

Jacobs went on to say that a trade mark owner could obtain protection under the Trade Marks Directive regardless of whether or not there was a confusion between the mark and the sign – in other words, even if consumers were perfectly aware that the product they were buying was not the branded product.

Finally, he reasoned that the Directive would only apply when the "allegedly infringing sign is used as a trade mark, that is to say for the purpose of distinguishing goods or services. That will not be the case where that sign is viewed purely as a decoration by the relevant section of the public."

In his opinion, "public interest considerations militate against extending that protection [of the Directive] so as to prevent traders from using simple and long-accepted decorations and motifs".

The opinion is available here