Up until late on Monday evening, the IPKat was a frustrated feline. He just couldn’t bear the tension. Last Thursday morning he leapt out of his basket, filled with expectation. It was the day he’d been waiting for – the day the ECJ issued its Adidas v Fitnessworld decision. Imagine his disappointment when he visited the website and found a press release but no judgment. Despite his numerous visits to the ECJ website, the case refused to appear. His mood was not improved when he found the case was not posted on Friday either. When it came to the end of the working day on Monday and it still wasn’t there he was tearing his fur out. Luckily though, friend of the IPKat Tibor Gold managed to obtain a copy and put the IPKat out of his misery. Here’s what he found.

Adidas is the proprietor for various items of clothing of a figurative mark made up of three vertical stripes of equal width running parallel which appear on the side and down the whole length of clothing in a colour that contrasts with the basic colour of the clothing. Fitnessworld marketed fitness clothing bearing two parallel stripes of equal width which contrasted with the main colour of the clothing. Adidas claimed that this constituted infringement because the public might associate Fitnessworld’s clothing with Adidas’, allowing Fitnessworld to take advantage of Adidas’ repute and damage the exclusivity of Adidas’ repute. The Hoge Raad der Nederlanden referred various questions to the ECJ including (i) whether Member States were entitled to provide Article 5(2) (the ‘dilution’ provision of the Trade Mark Directive) protection against use on similar and identical goods; (ii) whether likelihood of confusion was the criterion to be applied under Article 5(2) or whether there were some other relevant criteria and (iii) how a sign viewed by the public purely as an embellishment should be treated under Article 5(2).

According to the ECJ, the question of whether the Member states were entitled to provide Article 5(2) protection for similar or identical goods had already been affirmatively answered by the Court in Davidoff (Case C-292/00) [2003] ECR I-389. Therefore the ECJ thought it would be more helpful if it answered the question of whether Member States had to provide Article 5(2) protection if they opted to include that article in their national trade mark law. Once again, the answer was yes. The overall scheme of Directive 89/104 is such that marks with a reputation used on identical or dissimilar goods should not have less protection that marks with a reputation used on dissimilar goods. Under EU law, national courts are required to interpret national legislation that transposes directives as far as possible in accordance with the wording and purpose of the directive. In this case, that means that national courts must interpret legislation designed to implement Article 5(2) as requiring the protection to be granted against use on similar and identical goods as well as use on dissimilar goods.

Under Article 5(2), similarity between the mark and the sign requires the existence in particular of elements of visual, aural and conceptual similarity. The injury under that article is the result of the public establishing a link between the sign and the mark and is not conditional on the public confusing them. This link must be appreciated globally, taking into account all the factors relevant to the circumstance of the case.

The fact that a sign is viewed as an embellishment by the relevant section of the public does not mean of itself that the sign is ineligible for protection under Article 5(2), as long as the degree of similarity is such that the public make a link between the mark and the sign. However, where a national court finds that a mark is viewed by the public purely as an embellishment, it does not establish any link between the mark and the sign and therefore is not considered to be infringement under Article 5(2).

The IPKat feels that this case raises more questions than it answers. Although the ECJ has given clear guidance on the application of Article 5(2) to similar and identical goods, the concept of a link between a sign and a mark is new and is undefined. It also seems to pay little attention to the types of injury detailed in Article 5(2) (detriment and unfair advantage). Concepts that are familiar from confusion case law feature heavily, notably the similarity of signs test and the concept of a global appreciation but should they be applied in the same way in Article 5(2) cases. Finally, unlike the Advocate General, the ECJ has failed to comment on the general question of whether trade mark use is necessary for trade mark infringement, limiting its comments to embellishment cases.

Explore the world of fitness here, here and here
Things worth waiting for here, here and here
All you need to know about impatience here
Curb your impatience here


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