Adidas v Fitness World
Adidas are the owners of the well known three stripe trade mark. Fitnessworld market fitness clothing, some of which bears a double stripe motif. Adidas sued Fitnessworld for trade mark infringement in the Netherlands claiming that their use of two stripes would cause confusion and, that such use took an unfair advantage of its well known three stripe mark, with the result that its exclusivity would be impaired. At first instance Adidas succeeded, however, on appeal the Dutch Court found that customers would not, in fact, be confused as the defendant was only using their two stripe motif for embellishment or decoration
Before the Dutch Supreme Court Adidas then argued, for the first time, that because their mark was so well known it should enjoy enhanced protection (referencing Davidoff). The Dutch Supreme Court referred various questions to the ECJ including a request for a decision whether Article 5(2) of the Directive only relates to non-similar goods or whether it also applies to similar goods. Secondly, the ECJ was asked to opine whether infringement could still be found even where the public would only view the sign as being a mere decoration as opposed to trade mark use.
Not surprisingly in answer to the first question, the ECJ reaffirmed its judgment in the DAVIDOFF v DURFFEE case referred to above. The court went on to confirm, contrary to the observations submitted on behalf of the UK Government, that member states are bound to grant protection to the proprietors of well known trade marks under Article 5(2). The court also confirmed that protection exists for such marks even without a finding of confusion on the part of the relevant public, although they would have to establish a link between the sign and the mark.
On the second point, in the court's judgement, the fact that a sign is viewed as an embellishment or mere decoration by the relevant public is not, in itself, an obstacle to the protection conferred by Article 5(2); however, if the national court finds, in fact, that the relevant public view the sign purely as an embellishment and mere decoration, "it necessarily does not establish any link with a registered trade mark" with the result that infringement cannot be found under the provisions of Article 5(2). It will be interesting to see whether the Dutch Supreme Court interprets the evidence in the Dutch case such that Fitnessworld's 'sign' would only be seen as an embellishment or mere decoration. It is entirely possible that in practice the defendants will find it difficult to establish that there are no trade mark connotations whatsoever attached to the sign in dispute. Incidentally, the website owned by Fitnessworld which advertised many of their items of clothing, shows at least one garment which bears not two but three stripes. Whether Adidas are aware of this is not entirely clear. No doubt Fitnessworld will once again claim that such use is merely decorative.