• EUROPEAN PERSPECTIVES

    Three Stripes and You’re Out

    Under the EU Trade Marks Directive, it was open to legislators to introduce a provision based on Article 5(2). That Article of the Directive allowed the owner of a registered trade mark with a reputation in that Member State to prevent the use in the course of trade of a later sign, which is identical with or similar to the registered mark, in respect of goods or services which are not similar to those covered by the earlier registration. This provision only applies if the use of the later sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier mark. Most EU legislatures, including the Benelux, included Article 5(2) in their trade mark law during the past few years.

    A significant advantage of this provision is that it is not necessary to prove a likelihood of confusion in order to succeed. On the other hand, a perceived anomaly of Article 5(2) was that it appeared to apply only to goods and services which are dissimilar to those registered. On this basis, the owner of a registered trade mark with a reputation seemed, in some circumstances at least, to have broader rights in respect of a third party selling dissimilar goods or services (where showing a likelihood of confusion was not necessary) than he did against the seller of similar goods or services (where a likelihood of confusion appeared to be a prerequisite for a finding of infringement).

    A recent ECJ case (Adidas-Salomon and Adidas Benelux v Fitnessworld Trading) addressed this important point to trade mark law.

    Adidas, the German sportswear manufacturer, owns one of the most famous device trade marks in the world. The three, parallel, vertical stripes (of equal width) are said to represent the three sons of the company’s founder Adi Dassler. They became well known during the 1960s and 1970s when the televising of major sporting events allowed Adidas to bring their products (and their logos) to the attention of a worldwide audience.

    A UK company, Fitnessworld, sells Perfetto fitness clothing in the Netherlands. The Perfetto clothing has a logo which consists of two parallel stripes of equal width. Adidas brought a trade mark infringement action against Fitnessworld based on their Benelux trade mark registration for the three stripes device in class 25. It will be seen that the registered goods and the allegedly infringing goods were either identical or very similar.

    One of Adidas’ arguments was that Article 5(2) applied not only when the conflicting goods were dissimilar, but also when they were similar. If they were successful in this argument, then a likelihood of confusion between their mark and Fitnessworld’s sign would not be an absolute requirement for success.

    The case came before the Hoge Raad who put the following three questions to the ECJ:

    • Must Article 5(2) of the Directive be interpreted as meaning that, under a national law implementing that provision, the proprietor of a trade mark which has a reputation in the Member State concerned may also oppose the use of the trade mark or a sign similar to it, in the manner and circumstances referred to therein, in relation to goods or services which are identical with or similar to those for which the trade mark is registered?

    • Must the question concerning the similarity between the trade mark and the sign in such a case be assessed on the basis of a criterion other than that of (direct or indirect) confusion as to origin, and if so, according to what criterion?

    • If the sign alleged to be an infringement in such a case is viewed purely as an embellishment by the relevant section of the public, what importance must be attached to that circumstance in connection with the question concerning the similarity between the trade mark and the sign? The ECJ answered the questions as set out below:

    • Article 5(2) of the Harmonisation Directive cannot be given an interpretation which would lead to marks with a reputation having less protection where a sign is used for identical or similar goods or services than where a sign is used for non-similar goods or services.

    • Article 5(2) therefore entitles Member States to provide specific protection for registered marks with a reputation in cases where the later mark or sign, which is identical with or similar to the registered mark, is intended to be used or is used for goods or services identical with or similar to those covered by the registered mark.

    • Infringements under Article 5(2) are the consequence of a certain degree of similarity between the registered mark and the sign, by virtue of which the relevant public makes a connection between the sign and the registered mark or, in other words, establishes a link (emphasis added) between them, even if they do not confuse them. Therefore, in order to succeed under this (Article 5(2)) provision, even in the case where the two sets of goods are identical/similar, a likelihood of confusion finding is not necessary.

    • Where the (allegedly infringing) sign is viewed purely (emphasis added) as an embellishment (or a decoration), then logically the public do not make any link between the sign and the registered mark, and infringement cannot be established. However, in the factual situation where the sign is seen as an embellishment, but not purely as an embellishment (writer’s note: also as a trade mark?), then this is not, in itself, an obstacle to establishing an Article 5(2) case where, because the necessary degree of similarity exists, a link between the sign and the registered mark is shown.

     

     

    Comment

     

    This ruling confirms the earlier finding of the same Court in the Davidoff case (Davidoff & Cie and Zino Davidoff v Gofkid). From now on, when considering Article 5(2) of the Directive and similar provisions in the CTM Regulation and EU national trade mark laws, we must remind ourselves that the phrase “non-similar” means identical, similar and non-similar. As Captain Corcoran and Buttercup agree in H.M.S. Pinafore, “Things are seldom what they seem (skimmed milk masquerades as cream)”.

    As far as the question of embellishment is concerned, a sensible position would seem to be that if, as a matter of fact, it is established that the relevant public sees the sign as playing a dual role, namely both a decoration and an origin identifier, then it may be possible to succeed under Article 5(2) if the necessary link or connection with the registered mark having a reputation can also be shown.