UK: Advocate General Gives Article 5(2) Trade Mark Directive a Run for its Money in Adidas

Last Updated: 4 May 2004
Article by Mark Daniels

On 10 July 2003, Advocate General Jacobs delivered his Opinion in the case of Adidas–Salomon AG and Adidas Benelux BV -v- Fitnessworld Trading Ltd.


Adidas is the owner of the triple strip trade mark which is registered as a Benelux mark for a number of types of clothing. It was agreed by the parties that the triple stripe mark of Adidas is a strong mark and enjoys general recognition.

Fitnessworld marketed and sold fitness clothing under the name Perfetto bearing a double stripe motif – the stripes are parallel, of equal width, contrast with the main colour and are applied to the side seams of the clothing.

Adidas successfully applied to the District Court in September 1997 for an interlocutory order that Fitnessworld cease using in the Benelux countries any signs similar to the triple stripe motif, as applied to specified articles of clothing, and to account for profits on sales of the allegedly infringing articles. On appeal the Gereschtshof (Arnhem) set aside the judgment and dismissed Adidas’ claims. Adidas appealed to the Hoge Raad der Nederlanden, which stayed proceedings and referred questions to the ECJ on the interpretation of Article 5(2) of the Trade Marks Directive. Article 5(2) concerns the protection of well-known marks.

The Advocate General’s Opinion

Advocate General Jacobs considered that:

  1. Article 5(2) of the Directive would not be correctly implemented (into Member States’ national laws) unless the proprietor of a trade mark with a reputation in the Member State concerned was entitled to oppose the use of the mark or a similar sign, in the manner and circumstances described in the provision, not only in relation to goods and services which are not similar but also in relation to goods or services which are identical or similar to those for which the trade mark is registered. (Emphasis added).
  2. The notion of similarity between a mark and a sign for the purpose of Article 5(2) was to be assessed on the basis of the degree of sensory or conceptual similarity between them, and that the protection conferred by Article 5(2) does not require the existence of a likelihood of confusion between the mark and the sign (in the latter case, as was established in the earlier Adidas ECJ case of Marca Mode).
  3. It was a condition of the application of Article 5(2) that the allegedly infringing sign was used as a trade mark, that is to say for the purpose of distinguishing goods or services. That would not be the case where that sign is viewed purely as a decoration by the relevant section of the public.


On the question of implementation of Article 5(2) of the Directive, the ECJ’s judgment in Davidoff and Gofkid (Case No C-292/00) was given after the Hoge Raad der Nederlanden had referred its questions to the ECJ in this case. The effect of that decision was that Article 5(2) entitles a Member State to provide specific protection for registered trade marks with a reputation, where a later similar or identical sign is used for identical or similar goods or services. The Advocate General’s Opinion has followed this decision.

Slightly more controversial is the Advocate General’s Opinion regarding the requirement for the allegedly infringing sign to be used a trade mark (and not, for example as decoration). In the ECJ decision in Arsenal ([2002] ECR 1-10273), which concerned the different situation of infringement under Article 5(1)(a), it was held that a sign may still infringe even if it is not used in a trade mark sense, provided the use is still liable to jeopardise the guarantee of origin of the goods. The English Court of Appeal in the same case (Arsenal) followed that reasoning, even though the evidence suggested that the infringer’s sign was regarded by customers as a badge of allegiance rather than as an indicator of origin. Advocate General Jacobs considers that as the third party in Arsenal had used an identical mark on identical goods, such use was plainly trade mark use.

AG Jacobs considers that Article 5(2) is not contravened if the public regard the sign as merely embellishing the goods, and in no way as identifying origin. If his Opinion is followed by the ECJ, this would narrow the protection afforded to owners of well-known marks.

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.

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