Do stripes need to be kept free for use?

9:58am - the full text of the European Court of Justice decision has now been posted here on the Curia website.


The ECJ has just ruled in Case C-102/07 adidas v H & M. In essence adidas - which owns the ubiquitous three-stripe trade mark for many types of sports and leisure clothing - sued H & M for trade mark infringement after the latter sold two-stripe products through their retail outlets. adidas alleged similarity of marks and identity of goods to the point that there was a likelihood of confusion of the relevant consumer.

Right: what's more of a hazard: using someone else's stripes or trying to protect your own?

H & M disagreed, feeling that the mark shouldn't have been registered in the first place because it consisted of something (a simple stripey motif) that wasn't inherently distinctive and that should be available for other traders to use. The Hoge Raad (Dutch Supreme Court eventually referred three questions to the European Court of Justice (ECJ) for a preliminary ruling:

"In the determination of the extent to which protection should be given to a trade mark formed by a sign which does not in itself have any distinctive character or by a designation which corresponds to the description in Article 3(1)(c) of Directive 89/104, but which has become a trade mark through the process of becoming customary and has been registered, should account be taken of the general interest in ensuring that the availability of given signs is not unduly restricted for other traders offering the goods or services concerned (the requirement of availability)?

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?

Right: H & M in Covent Garden yesterday afternoon. 50% sales but not a stripe in sight ...

If the answer to Question 1 is in the affirmative: does it, further, make any difference whether the sign contested by the holder of a trade mark is devoid of distinctive character, within the terms of Article 3(1)(b) of Directive 89/104, or contains a designation, within the terms of Article 3(1)(c) of the Directive?"

The Court's ruling has not yet been posted on the Curia website, but a press release says that (i) the requirement of availability of certain signs is not one of the relevant factors taken into account in the assessment of the likelihood of confusion, (ii) since the requirement of availability is extraneous both to the assessment of the degree of similarity between the mark with a reputation and the sign used by the third party and to the link which may be made by the relevant public between that mark and the sign, it cannot constitute a relevant factor for determining whether the use of the sign takes unfair advantage of the repute of the mark and (iii) for a third party to be able to plead the limitations of the effects of a trade mark contained in the directive on trade marks and to rely on the requirement of availability, the indication used by it must relate to one of the characteristics of the goods: the purely decorative nature of the two-stripe sign pleaded by the companies in question does not give any indication concerning one of the characteristics of the goods.

The IPKat says, it looks from this as though the potentially wide scope of the "embellishment" defence in adidas v Fitnessworld has been trimmed somewhat. Merpel says she needs to think a bit about the first point mentioned in the press release. When common or descriptive prefixes, for example, are disregarded when considering a likelihood of confusion -- which is standard practice -- it's not because they need to be kept free for use that they are disregarded but because they're not distinctive even when taken within the context of a global assessment; but is there a point at which 'need to be kept free' and 'common and/or descriptive' meet? (not that this will help anyone using stripes in a case such as this).

For a fuller account of the background to this ruling see the note on Class 46