IPKAT RIDDLE 1

The IPKat offers a modest prize to any person who can explain to his satisfaction the meaning of paragraph 62 of Advocate General Jacobs' opinion in Adidas v Fitnessworld, reproduced below:

"The effect of the way in which the decorative element is perceived in the present case is very different from the situation in Arsenal [v Reed], in which the [European] Court [of Justice] held that it was not relevant that the allegedly infringing sign was perceived as a badge of support for or loyalty or affiliation to the proprietor of the mark. That case concerned a claim for infringement under Article 5(1)(a), which provides for absolute protection in the case of identity between the mark and the sign and between the goods or services concerned and those for which the mark is registered. In that context the unauthorised use by a third party of the identical mark on identical goods was plainly trade mark use, notwithstanding that perception."

At this point in the Adidas case, the Advocate General was considering whether the use by a defendant of a sign similar to a claimant’s registered mark as a decoration or embellishment rather than to denote the origin of the defendant’s good can constitute infringement under Article 5(2) (the “Euro-dilution” provision) of the Trade Mark Directive. Whether trade mark use (use to denote the origin of the defendant’s goods) is needed for infringement is a moot point in the UK following Arsenal v Reed, where the Court of Appeal held that trade mark use is not needed, at least under Article 5(1)(a) and the House of Lords' conflicting holding that trade mark use is needed for all types of infringement in R v Johnstone.

The Advocate General in paragraph 62 says that there was clearly trade mark use in Arsenal v Reed and distinguishes the Adidas situation because the defendant’s use there was decorative only (and hence did not indicate the origin of its goods). Why then does he point to the absoluteness of the protection granted by Article 5(1)(a) to support his claim? Doesn’t the concept of absoluteness embrace all uses whether or not they involve the denoting of origin? Simiarly, his final sentence seems to suggest that just the fact that the third party’s use of the mark is unauthorized together with the fact that both the two parties’ marks and signs are identical equals trade mark use, but such a definition would surely catch uses other than those which denote the origin of goods. This is demonstrated by his comment that the public’s perception of the mark as a badge of loyalty did not prevent it from being used as a trade mark.

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