Risk of association between adidas’s three stripes and four-stripe STRIKE mark

The Administrative Court of Appeal of Athens has held that a trademark consisting of four parallel stripes and the word 'strike' was sufficiently similar to adidas’s famous three-stripe mark to cause a risk of association in the mind of consumers (Decision 1357/2009, June 10 2009, unpublished). 
The decision is the latest instalment in adidas’s legal battle to enforce its three-stripe mark in Greece. In earlier proceedings, adidas had already obtained a civil injunction against the use of four stripes on shoes on the Greek market, as well as damages (Decision 1030/2008 of the Supreme Court and Decision 5749/2009 of the Court of Appeal, unpublished).
In the present case, adidas opposed the registration of the STRIKE mark on the grounds that:

  • there was a risk of confusion or association under Article 4(1)(b) of the Trademarks Act (2239/1994); and
  • there was a risk of dilution of its famous three-stripe mark under Article 4(1)(c) of the act (implementing the provisions of Article 4(4)(a) of the First Trademarks Directive (89/104/EEC)).
The Administrative Court of Appeal of Athens held that the addition of the word element 'strike' in the opposed mark was insufficient to avoid a risk of association with adidas's mark. Having found that there was a risk of association, the court did not address the issue of dilution. Accordingly, it allowed the opposition without examining the conditions of protection of famous marks under Article 4(1)(c) of the act (ie, whether use of the third-party mark would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the famous mark).

The decision appears to be based on a remarkably wide interpretation of the concept of 'association', which would extend the scope of protection of famous trademarks. Considering the difficulties in meeting the conditions under Article 4(1)(c) (particularly in light of the decision of the European Court of Justice in Intel (Case C-252/07)), the court's interpretation will certainly be welcome by owners of famous brands.

For further details on the Intel decision please see "ECJ denies absolute trademark protection for superbrands" and "The impact of Intel").
Nicolas K Dontas, Dontas Law Offices, Athens

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