Adidas-Salomon AG, formerly Adidas AG, Adidas Benelux BV v Fitnessworld Trading Limited

Date

23 October 2003

Legislation

Trade Marks Act 1994, s.10(3)
Directive 89/104, Article 5(2)

Keywords

trade mark infringement; trade mark use; embellishments; similar; likelihood of confusion

Counsel

C. Gielen for Addidas, J.J. Brinkhof, D.J.G. Visser advocaten

Solicitors

Unknown

Judge

J.-P. Puissochet (President); C. Gulmann (Rapporteur); F. Macken, N. Colneric and J.N. Cunha Rodrigues, Judges

Court

European Court of Justice

Reported

Case C-408/01 (European Court of Justice)

Summary

This case concerns the scope of the civil infringements under Article 5(2) of the Trade Marks Directive 89/104 and its UK equivalent s.10(3) of the Trade Marks Act 1994. Section 10(3) of the 1994 Act states as follows:

"A person infringes a registered trade mark if he uses in the course of trade a sign which: (a) is identical with or similar to the trade mark, and; (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered, where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark."

The provision in the Directive makes it optional for member states to introduce protection of this form into their national laws.

Adidas was the proprietor of a trade mark consisting of three stripes of equal width which it used as a device down the side of various articles of clothing. Fitnessworld marketed clothing under the Perfetto brand with two vertical stripes of equal width. Adidas sued for trade mark infringement.

Decision:

The ECJ considered Article 5(2) of the Directive and concluded that the protection should be made out:

• both in relation to goods or services which are not similar and in relation to goods or services which are identical with or similar to those covered by that mark.

Section 10(3) of the Trade Marks Act 1994 currently states that this form of protection is only available where the goods or services are not similar. This case means that this restriction in the Act is not correct from the point of view of Community Law and consequently it should be interpreted to apply to both similar and non-similar goods and services.

Furthermore the ECJ added that this form of protection is not conditional (unlike some other forms of civil infringement) on a finding of a degree of similarity between the mark with a reputation and the sign such that there exists a likelihood of confusion between them on the part of the relevant section of the public. It is sufficient under s.10(3) for the degree of similarity between the mark with a reputation and the sign to have the effect that the relevant section of the public establishes a link between the sign and the mark.

Fitnessworld also argued that the mark, being merely three stripes applied to the clothing, was viewed as an embellishment by the public and not as a trade mark. The ECJ concluded that whether infringement had taken place was essentially a question of fact for the national court to determine and in doing so it should apply the following principles:

• the fact that a sign is viewed as an embellishment by the relevant section of the public is not, in itself, an obstacle to the protection conferred s.10(3) of the Trade Marks Act 1994;
• however, if there was a finding of fact by the national court that the relevant section of the public views the sign purely as an embellishment, it necessarily does not establish any link with a registered mark and as such infringement under s.10(3).

This is a very important case which casts considerable doubt over the drafting of s.10(3) of the Trade Marks Act 1994.