TRADE MARK
Merchandising

European Court of Justice case C-408/01
This case upheld the decision of the case of Davidoff et Cie SA v Gofkid Ltd (C292/00) and the European Court held that article 5(2) of Directive 89/104/EEC could be used by owners of registered marks to prevent use in relation to services which were both similar to the use of the mark by the registered owner and in relation to goods and services which were not similar. Here Adidas, who have a mark registered at the Benelux Trade Mark Office, wished to use EC trademark law to protect their mark: the mark is three parallel stripes of equal width running on the side and down the length clothing. The stripes are always of a contrasting colour to the base colour of the clothing. The defendant marketed fitness clothing with a similar double stripe motiff. The ECJ held that a member state must offer protection in cases of use by third parties of a later mark or sign which was identical or similar both in relation to goods and services which were not similar, and for goods and services which were covered by the mark’s registration or use. As for the similarities of the marks themselves, it is sufficient that the similarity has the effect on the relevant section of the public establishing a link between the marks.

ECJ C-408/01

The ECJ judgement will now be used by the Dutch Courts to reach a final decision in the case. However it is for the Dutch Court to decide if the Fitnessworld ‘two stripes’ is actually an infringement of the Adidas mark. The Dutch court of first instance had dismissed Adidasade-mark infringement action on the basis that there was no likelihood of confusion.

See: http://www.patent.gov.uk/about/ippd/ecj/2001/ andhttp://www.dww.com/newsletter/archive.html