Advocate General delivers opinion in adidas Case

Advocate General Colomer has delivered his opinion in adidas AG v Marca Mode CV, which is pending before the European Court of Justice (ECJ). At issue in this case was to what extent the general interest in keeping a certain sign free for use by competitors should be taken into account when assessing the scope of protection of a trademark. The concept of general interest is also referred to as Freihaltebedürfnis, a doctrine developed under German trademark law. In particular, the issue was to what extent the general interest in using two vertical stripes on sportswear should be taken into account when assessing the scope of protection of adidas AG's famous three-stripe trademark.

The issue was raised in Dutch court proceedings between adidas and four Dutch retail organizations. According to the Den Bosch Court of Appeal, adidas was entitled to monopolize the use of three stripes only. The use of two stripes (which was considered to be a commonly used sign) should remain freely available. The case made its way to the Dutch Supreme Court, which referred various questions to the ECJ. The Supreme Court essentially asked whether the Freihaltebedürfnis should be taken into account when assessing the scope of protection of a trademark which consists of a sign that initially lacked distinctiveness under Article 3(1)(b) of the First Trademarks Directive (89/104/EEC) or is descriptive under Article 3(1)(c), but has acquired secondary meaning through use (for further details please see "Dutch Supreme Court seeks clarification of Chiemsee").

In his opinion, Colomer pointed out that the concept of Freihaltebedürfnis had never been adopted by the ECJ. In its Chiemsee decision, the ECJ held that the assessment of whether a sign is descriptive does not depend on the existence of a concrete, actual or serious need to keep a certain sign free for the benefit of third parties (ie, the German concept of Freihaltebedürfnis). Nevertheless, in later decisions the ECJ has referred repeatedly to the general interest in keeping certain signs free for use.

Colomer took the view that the limitations to trademark rights are to be found in Article 6 of the directive, rather than in the concept of Freihaltebedürfnis. Article 6 provides that the owner of a trademark cannot prevent a third party from using the following signs, as long as this use is in compliance with fair and honest practices in industrial or commercial matters:

• a third party's name and address;
  
  
• indications concerning the characteristics of goods or services; and
  
  
• a sign used to indicate the intended purpose of a product or service.

Colomer pointed out that Article 6 does not refer to a trademark which is not inherently distinctive but acquired secondary meaning through intensive use (Article 3(3) of the directive). According to Colomer, there is no general interest in keeping such signs free for use by other market participants. The signs that should be kept free are those which:

• describe certain characteristics of the goods;
  
  
• have become usual in the course of trade; or
  
  
• embody certain technical features of the goods.

Therefore, according to Colomer, if the Dutch court finds that adidas's three-stripe trademark lacked distinctiveness initially but acquired distinctive character through intensive use, the scope of protection of the trademark should not be limited by the general interest. On the other hand, if the Dutch court considers that the three stripes describe the characteristics of the goods, the limitations set out in Article 6(1)(b) of the directive will become relevant. In that case, the general interest should be taken into account when assessing the scope of protection of the trademark.

In addition, Colomer stated that, once a sign has been held to be descriptive under Article 6(1)(b), it is irrelevant whether consumers perceive the sign as a mere decoration.

Whether the ECJ will follow Colomer's opinion remains to be seen.

Paul Reeskamp, Allen & Overy LLP, Amsterdam