Coming up in the ECJ

On 16 January the Advocate General will give his opinion on a question referred by the Hoge Raad der Nederlanden in Adidas v H & M. The question is rather gabbled (perhaps a poor translation, since it refers to marks which have become distinctive through customary usage). The main thrust seems to be whether there is a need to take the interests of other traders in keeping certain marks free into account when deciding if a mark has acquired sufficient distinctiveness to overcome a descriptiveness objection. This is something that has puzzled the IPKat for a while. If a trade mark needs to be kept free for others, why should this need disappear if the mark has acquired distinctivness?

Our old friend, the trade mark use issue, makes a sneaky reappearance, with the Dutch court asking

‘If the answer to Question 1 is in the affirmative: does it make any difference whether the signs which are referred to therein and which are to be held available are seen by the relevant public as being signs used to distinguish goods or merely to embellish them?’

For good measure, the court has also asked whether it makes a difference whether the mark is also devoid of distinctive character, or contains a 'designation' [whatever that means] protected by Art.3(1)(c).

Also, who says that ideas aren’t protected by IP rights? On 16 January, the CFI will be ruling on the validity of the IDEA Community trade mark, currently held by Ikea.

Coming up in the ECJ Coming up in the ECJ Reviewed by Anonymous on Wednesday, January 02, 2008 Rating: 5


  1. Not sure what the Dutch Court are getting at here. If a mark has been found to have acquired distinctiveness then isn't that an end of the matter - no further objection can arise.

  2. The referral decision can be found at (in Dutch, obviously).

    Adidas is trying to stop H&M from selling sports and leisure clothing with two parallel stripes (using its trade mark on three parallel stripes registered for the same goods).

    The Dutch Supreme Court seems to ask the ECJ whether the general interest in ensuring the availability of the two-stripes pattern must be taken into account in determining the scope of protection of the Adidas trade mark. According to the Supreme Court, C-108/97 (Chiemsee) points towards "yes", while C-104/01 (Libertel) points towards "no".

    The advocate-general for the Dutch Supreme Court (not the ECJ's) considered that a referral was not necessary and seems to have sided with Adidas, at least on this particular point. The case as a whole seems more complex than this, though. (I haven't analyzed the whole decision in depth.)

  3. Thanks anonymous, that helps. It wouldn't be the first time that the ECJ is accused of giving conflicting decisions, or at least decisions that are apparently in tension.

    How much protection, if any, do you give three stripes, should have been the question to the ECJ. To which they would probably have said, "um,that's a matter for the national court (but we think the answer should be "not a blinking lot !!" )


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