UK: The ECJ is The Champion for Famous Trade Marks in the Adidas Decision

Last Updated: 12 November 2003

Article by Sara McNeill and Bonita Trimmer


Adidas, the owner of a Benelux mark consisting of the famous three stripes device brought proceedings against Fitnessworld, which markets fitness clothing bearing a similar motif of two parallel stripes of equal width. Adidas claimed that the activities of Fitnessworld created a likelihood of confusion on the part of the public. In 1997 it was successful in obtaining an interlocutory order that Fitnessworld cease using any signs similar to the triple stripe motif, as applied to specified articles of clothing, in the Benelux countries. The Dutch Regional Court of Appeal, however, set aside this order and dismissed Adidas’ claims. This was partly because of the appeal court’s finding that there was no likelihood of confusion given the sophistication of the relevant category of consumers

Adidas appealed to the Hoge Raad der Nederlanden, which stayed proceedings and referred several questions to the European Court of Justice on the interpretation of Article 5(2) of the Trade Marks Directive, which deals with the protection of marks with a reputation.

The Questions & the ECJ’s Answers

Question 1(a)

Must Article 5(2) of the Directive be interpreted as meaning that, under a national law implementing that provision, the proprietor of a trade mark which has a reputation in the Member State concerned may also oppose the use of the trade mark or a sign similar to it, in the manner and circumstances referred to therein, in relation to goods or services which are identical with or similar to those for which the trade mark is registered?

The Court confirmed that this question had been answered "yes" in the Davidoff and Gofkid (Case No C-292/00). wIn Davidoff the ECJ ruled that, if a Member State "transposes Article 5(2) [then it] must grant protection which is at least as extensive for identical or similar goods or services as for non-similar goods or services". The Court here expanded upon its earlier conclusion by clarifying that the option which Member States have in relation to Article 5(2) is limited to whether to grant this wider protection to marks with a reputation or not; there is no option or discretion relating to the scope of that protection once the Member State has decided to grant it.

The Court therefore concluded that where a Member State exercises the option under Article 5(2) it is "bound to grant the specific protection in question" where third parties use a later mark or sign which is identical with or similar to the registered mark with the reputation in relation to both goods or services which are not similar and those which are similar.

Question 1(b) concerned the relationship between Article 5(1)(b) and Article 5(2) but as it was reliant on a negative answer to question 1(a) it was not answered by the Court.

Question 2(a)

Must the question concerning the similarity between the trade mark and the sign in such a case be assessed on the basis of criterion other than that of (direct or indirect) confusion as to origin, and if so, according to what criterion?

The Court confirmed existing case law that a likelihood of confusion on the part of the relevant section of the public is not a condition to obtaining protection under Article 5(2). The Court emphasised that the condition of similarity between the mark and the sign referred to in Article 5(2), although it does not require confusion, does require "the existence of, in particular, elements of visual, aural or conceptual similarity" sufficient to cause the relevant section of the public to establish "a link" between the sign and the mark. The Court went on to say that the existence of this link must be "appreciated globally taking into account all factors relevant to the circumstances".

Question 2(b)

If the sign alleged to be an infringement in such a case is viewed purely as an embellishment by the relevant section of the public, what importance must be attached to that circumstance in connection with the question concerning the similarity between the trade mark and the sign?

The Court accepted that the public’s perception of a sign as a decoration or embellishment could effect the national court’s assessment of whether the sign was sufficiently similar to the mark. This was despite the Advocate General view that whether or not "the sign is viewed purely as a decoration does not…. assist in that assessment". The ECJ reiterated that the degree of similarity between the mark with the reputation and the sign must be sufficient for the relevant section of the public to establish a link between the sign and the mark. Therefore, protection conferred by Article 5(2) is not barred if a sign is viewed, by the relevant section of the public, as an embellishment if it is nonetheless sufficiently similar to the mark for them to establish a link between the sign and the mark. Conversely, where a national court makes a finding of fact that the relevant public views the sign "purely" as an embellishment then the sign may not be sufficiently similar to the mark for any link between them to be established. In the latter case Article 5(2) will not apply.


In light of Davidoff and the Sabel and Marca cases the responses of the ECJ to questions 1(a) and 2(a) are not surprising. Indeed, the Advocate General arrived at the same views in his Opinion of 10 July 2003. It is now clear that the ECJ will have very little sympathy for national courts who understandably feel constrained by the clear and unambiguous wording of "not similar" goods (transposed into their national legislation directly from the Directive) from extending this type of protection to use of a similar sign on similar or identical goods!

Perhaps more interesting is that the Court did not to follow the opinion of Advocate General Jacobs in its answer to question 2(b). The Advocate General clearly felt strongly that the application of Article 5(2) was conditional upon use of the allegedly infringing sign "as a trade mark" (i.e. that the mark was being used in order to distinguish the goods as originating from a particular source). He felt this condition could not be fulfilled where the sign is perceived purely as an embellishment. Instead, the ECJ once again sidestepped this still vexed issue by submerging it in the test of sufficient similarity. However, the Court’s apparent belief that perceiving something purely as a decoration (for example a red triangle central to an abstract pattern on a T-shirt) would prevent the average consumer from mentally linking it with a famous brand seems to bear little relation to real life and the extent to which famous brands have permeated the consciousness of modern man.

As this protection is bound now to be invoked in a great many cases where confusion evidence is not available, it is inevitable that there will be further references to the ECJ in order to clarify the full extent of this extension of protection for trade mark owners. For example what is the level of reputation required for a mark to benefit from Article 5(2) protection and in what circumstances will unfair advantage have been taken of or detriment caused to the distinctive character or repute of a mark?

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.