Supermarket runs out of luck in sports shoe dilution case

Spain

In adidas-Salomon AG v Alcampo SA (Case 1000/25, September 6 2004), First Instance Court 58 of Madrid has ordered the defendant to stop importing and selling training shoes featuring a three-stripe design.

Alcampo SA is the Spanish subsidiary of the French retail chain Auchan. It began importing and selling Longway branded shoes bearing three stripes. The plaintiff, adidas-Salomon AG, filed a complaint alleging that the three-stripe design was (i) very similar to its registered three-stripe mark, and (ii) almost identical to the three-stripe motif used on its Grind 2 brand of shoes.

The court upheld the complaint and held that the importation and sale of the Longway product amounted to (i) trademark infringement of adidas's three-stripe mark, and (ii) unfair competition.

In relation to the trademark infringement finding, the court stated that adidas's three-stripe mark is a well-known (and renowned) trademark. As a result, it reasoned that there was no need for adidas to prove that the similarities between the design on the Longway shoe and adidas's mark would lead to a likelihood of confusion. Rather, it only had to show that (i) consumers, without risk of confusion, would make a link between the trademark and the sign, or (ii) the mark would be diluted. Referring to the European Court of Justice's decision in adidas-Salomon AG v Fitnessworld Trading Ltd (see ECJ reaffirms its interpretation of the EU anti-dilution provision), the court added that Spanish law's main concern in cases involving the infringement of well-known marks is the prevention of dilution.

As for its unfair competition finding, the court declared that Alcampo had taken advantage of adidas's reputation and the efforts it had made in creating the Grind 2 product.

Accordingly, the court ordered Alcampo to cease the sale of the Longway shoe and, in general, not to infringe adidas brands or sell products with designs copied from adidas. Furthermore, Alcampo was instructed to pay damages and to arrange for the publication of the court's findings in two national newspapers.

Alejandro Angulo, Grau Baylos & Angulo, Barcelona

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