Dutch Supreme Court seeks clarification of Chiemsee

Netherlands

In a case involving the famous adidas three-stripe trademark, the Dutch Supreme Court has referred questions to the European Court of Justice (ECJ) to clarify the role played by the need to keep a sign free in assessing the scope of protection granted to a sign that has acquired distinctiveness through use (Case C05/160HR, February 16 2007).

adidas filed a trademark infringement action in the Netherlands against Marca Mode, a daughter company of C&A, H&M Hennes & Mauritz and Vendex. Adidas claimed that the use of two vertical stripes along the full length of casual and sports clothing articles produced by Marca Mode infringes its three-stripe trademark. The `s-Hertogenbosch Court of Appeals rejected adidas's claims. The court held that the three-stripe mark acquired a strong distinctive character through adidas's advertising efforts and, for that reason, it enjoys a broad scope of protection. However, the court continued, that does not mean that protection also extends to other stripe designs because such designs do not lend themselves, by their nature, to such a broadly expanding monopolization; these signs are being used generally and must therefore remain available to third parties.

On further appeal, the Dutch Supreme Court referred to the Windsurfing Chiemsee Case, in which the ECJ held that:

  • the grounds to refuse the registration of a sign under Article 3(1)(c) of the First Trademarks Directive serve the general interest of keeping the sign free for all to use (a principle known by its German name of 'Freihaltebedürfnis'); and

  • a finding of acquired distinctiveness may not be made in view of the Freihaltebedürfnis principle.

Further, the court referred to the Libertel judgment, in which the ECJ held that when assessing the distinctive character of a colour, one must take into account the general interest of the public which provides that the availability of colours should not be unjustifiably restricted for the other participants in the market who offer identical goods or services (see The future of colour registration is orange). Because this casts some doubt onto whether the ECJ still supports its Chiemsee ruling the Dutch Supreme Court sought to clarify the following points with the ECJ:

  • When assessing the scope of protection of a trademark that consists of either (i) a sign that is not inherently distinctive, or (ii) an indication as meant under Article 3(1)(c) of the directive, but which was registered as a trademark after having acquired distinctiveness through use, should one take into account the principle that the availability of certain signs should not be unjustifiably restricted for the other participants in the market who offer identical goods or services to those of the mark owner?

  • If the answer to the first question is affirmative, does it make any difference whether the signs that need to be kept free are seen by the relevant public as signs for distinguishing the goods, or rather as a mere decoration of the goods?

  • If the answer to the first question is affirmative, does it make any difference whether the sign that is being attacked by the trademark owner lacks distinctive character as meant under Article 3(1)(b) of the directive, or contains an indication as meant under Article 3(1)(c)?

These questions are important because a trademark registration protects not only against the use of an identical sign but also against use of confusingly similar signs. Therefore, should the courts take into consideration the need to keep a sign free when assessing this likelihood of confusion when trademarks that acquired distinctiveness through use are involved?

Paul Steinhauser, Steinhauser Hoogenraad Advocaten, Amsterdam

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