Two-stripe design does not infringe adidas's three-stripe mark

Netherlands

The 's-Hertogenbosch Court of Appeal, in summary proceedings, has ruled that clothing chain H&M Hennes & Mauritz Netherlands BV and a number of other clothes manufacturers were not infringing adidas AG's (now known as adidas-Salomon AG) three-stripe trademark by using two stripes on sports and casual wear (Case C99/00284, March 29 2005).

adidas's claim stemmed from H&M's use of a two-stripe design in 1996. It argued that H&M had infringed its famous three-stripe trademark pursuant to Articles 13A1(b) and (c) of the Benelux Trademark Act, which are equivalent to Articles 5(1)b and 5(2) of the Community Trademark Directive, respectively. In response, H&M filed a counterclaim in which it requested the court to declare that it was not infringing adidas's three-stripe trademark when using two-stripe designs.

Article 13A1(b) states that a trademark owner can prevent all third parties not having its consent from using in the course of trade any sign where, because of its identity with, or similarity to, the trademark and the identity or similarity of the goods or services covered by the trademark and the sign, there exists a likelihood of confusion on the part of the public, which includes a likelihood of association between the sign and the trademark.

The 's-Hertogenbosch Court of Appeal rejected the claim under this article because it did not agree with adidas that the visual difference between three and two stripes is only marginal. It ruled that this is an essential difference because it immediately catches the eye and, therefore, no likelihood of confusion existed.

The court next examined the claim under Article 13A1(c) of the act. This article indicates that a trademark owner is entitled to prevent all third parties not having its consent from using in the course of trade any sign that is identical with, or similar to, the trademark in relation to goods or services that are not similar to those for which the trademark is registered, where (i) the mark has a reputation in the relevant member state, and (ii) use of the sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark.

The court referred to the case of adidas-Salomon AG v Fitnessworld Trading Ltd, in which the European Court of Justice stated that it is sufficient for the degree of similarity between a mark with a reputation and a conflicting sign to have the effect that the relevant section of the public establishes a link between the sign and the mark (see ECJ reaffirms its interpretation of the EU anti-dilution provision). Based on this reasoning, the Dutch court dismissed adidas's Article 13A1(c) claim as it had not provided any evidence from which to conclude that the public, in 1996, established such a link between the two-stripe design used by H&M and adidas's three-stripe trademark. The evidence submitted by adidas only referred to present circumstances.

adidas further argued that the court should take into account the outcome of German court proceedings in which adidas successfully claimed trademark infringement against one of the parties to the Dutch proceedings. The Dutch court disagreed, stating that although both proceedings covered similar ground, this did not mean that the German decision should have a bearing on the outcome of the Dutch case. It noted that the facts, claims, defences, clothing at issue and the relevant section of the public were different from those in the German case.

The court also refused H&M's counterclaim, ruling that the wording of the declaration was too wide. Allowing H&M's request, said the court, would deny that the scope of protection of a trademark is not static; the circumstances relevant to the assessment of trademark infringement are subject to change.

For discussions of adidas's battle to protect its rights in its three-stripe mark in other jurisdictions, see adidas wins case against three-stripe mark infringer, Supermarket runs out of luck in sports shoe dilution case and adidas strips competitors of two-stripe designs.

Marga Verwoert, Allen & Overy, Amsterdam

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