Use of decorative marks

Adidas owned a Benelux mark for its triple stripes which appeared down the side of its clothing. The stripes were of equal width running parallel, and contrasted in colour from the basic colour of the clothing. Fitness World marketed clothing which bore two vertical stripes in a similar manner. In 1997 the Dutch court ordered an injunction on the basis that the double stripe created a likelihood of confusion with Adidas' mark and that the exclusivity of Adidas' mark was impaired. On appeal the order was set aside on the grounds that there was no likelihood of confusion and also that the double stripes were used purely as decoration. Adidas appealed, relying on its mark being a mark "with a reputation" of which unfair advantage was being taken under Article 5(2) of the Trade Marks Directive which states:

"Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark."

This Directive is implemented in the UK by Section 10(3) of the UK Trade Marks Act. The Dutch courts referred the case to the ECJ asking for guidance on the interpretation of Article 5(2) .

The Advocate General stated that:

1. Article 5(2) intended that the owner of a mark with a reputation should be able to enforce that provision against use of his mark in relation to identical or similar goods/services as well as dissimilar ones (as decided in Case C-292/00 Davidoff and Zino Davidoff, January 2003).

2. Similarity of marks was to be assessed by reference to the degree of sensory or conceptual similarity between them.

3. Article 5(2) did not require there to be a likelihood of confusion.

4. For Article 5(2) to apply, the allegedly infringing sign must be used as a trade mark, i.e. for the purpose of distinguishing. This would not be the case where the sign was viewed purely as decoration. It would be undesirable to extend trade mark protection so as to preclude the use of common decorative motifs such as stripes.

The full judgment of the ECJ is awaited, but in any event, the question as to whether a sign is used as a trade mark or as pure decoration will be an issue of fact to be decided by national courts.

For further details please contact Stephen Whybrow at [email protected] or Lucy Kilshaw at [email protected].