EU anti-dilution provision does not extend to decorations

European Union

Advocate General Jacobs has given his opinion in adidas Salomon v Fitnessworld Trading Ltd, finding that a sign that is viewed purely as a decoration by the relevant section of the public does not infringe the rights of a trademark owner pursuant to Article 5(2) of the Community Trademark Directive.

adidas Salomon AG, the owner of a famous figurative trademark consisting of three stripes, had claimed before the Dutch courts that the use by Fitnessworld Trading Ltd of a two-stripe motif on articles of clothing infringed adidas's trademark rights. Before determining the issue, the Dutch Supreme Court referred the interpretation of Article 5(2) of the Community Trademark Directive - which deals with the protection of famous marks - to the European Court of Justice (ECJ) for a ruling.

Jacobs followed the decision of the ECJ in Davidoff & Cie SA v Gofkid Ltd (see Anti-dilution protection extended by ECJ). He interpreted Article 5(2) as follows:

  • it grants the owner of a trademark with a reputation in the member state concerned the right to oppose the use of an identical or similar sign in respect of identical or similar goods - and not just dissimilar goods;

  • the notion of similarity between a mark and a sign is to be assessed on the basis of the degree of sensory or conceptual similarity between them; and

  • it does not require the existence of a likelihood of confusion between the mark and the sign.

However, Jacobs concluded that, for the purposes of Article 5(2), a sign may not be correctly regarded as used for the purpose of distinguishing goods or services (ie, as a trademark) where it is viewed purely as a decoration by the relevant section of the public. Furthermore, Jacobs said it would be undesirable, as a matter of principle, to extend the protection of trademarks in a way that precludes the use of common decorations and motifs such as stripes.

Patricia McGovern, LK Shields Solicitors, Dublin

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