EUROPEAN PERSPECTIVES

Infringement requires more than Mere Association

The German company, Adidas AG, owns one of the most famous trade marks in the world, the three parallel stripes that are emblazoned on sportswear worn by the famous and not-so-famous alike.

Such a simple and successful device is obviously open to imitation. The question of how close imitators can approach the original mark recently came before the European Court of Justice.

In this case, a Dutch company, Marca Mode, had begun selling a range of sports clothes in the Netherlands, some bearing two longitudinal stripes, others bearing three vertical stripes which were broken up by a medallion showing a picture of a cat and the word Tim.

Adidas sued for interim relief based on trade mark infringement of their Benelux trade mark registration for the three stripe device covering sports clothes and articles connected with sport (Article 13 A(1)(b)) of the Uniform Benelux Trade Mark Law, which is based on Article 5(1)(b) of the Trade Mark Harmonisation Directive (89/104/EEC). Before the District Court and the Regional Court of Appeal the interim relief was granted, both Courts finding that, where the registered mark is particularly distinctive (either per se or through use), trade mark infringement could be established on the basis of a likelihood of association. In the view of both Courts, if the earlier mark was particularly distinctive and a likelihood of association could be shown, then the risk of confusion could not be excluded and therefore the relief requested should be allowed.

Marca Mode appealed again, this time to the Benelux Hoge Raad. The Hoge Raad recognised the importance of the matters raised and therefore put the following question to the European Court of Justice,

Where a trade mark has a particularly distinctive character, either per se or because of the reputation that it enjoys with the public, and a third party, without the consent of the proprietor of the mark, uses, in the course of trade in goods or services which are identical with, or similar to, those for which the trade mark is registered, a sign which so closely corresponds to the mark as to give rise to the possibility of its being associated with that mark, must Article 5(1)(b) of the Directive be interpreted as meaning that the exclusive right enjoyed by the proprietor entitles him to prevent the use of the sign by that third party if the distinctive character of the mark is such that the possibility of such association giving rise to confusion cannot be ruled out?

The ECJ’s answer to the question was short and to the point. They noted that Article 5(1)(b) of the Directive (dealing with trade mark infringement) was in substantially identical terms to Article 4(1)(b) (dealing with the registration of potentially conflicting trade marks), that Article 4(1)(b) had already been the subject of interpretation by the ECJ in, for example, Puma v. Sabel (1998 RPC 199) and that the interpretation of Articles 4(1)(b) and 5(1)(b) should be the same. It followed that, in order to establish trade mark infringement under the Directive, it was necessary to show a genuine and properly substantiated likelihood of confusion as to the origin of the goods or services in question. It was not enough to show a likelihood of association and the possibility of a resultant confusion.

The ECJ repeated their earlier finding in Canon v. MGM that the more distinctive the earlier mark, the greater will be the likelihood of confusion. However, this did not mean that a likelihood of association alone could ever be sufficient to establish trade mark infringement. No matter how famous a trade mark, under Article 5(1)(b) of the Directive, it was necessary to establish a likelihood of confusion.

Finally, the Court once again took the view that there was no inconsistency between either Article 4(1)(b) or 5(1)(b) of the Directive, (the registration of or infringement of identical/similar marks and identical/ similar goods) and either Article 4(3) or 5(2) of the Directive (the registration of or infringement of identical/similar marks and dissimilar goods). The absence of the need for a likelihood of confusion under either Article 4(3) or 5(2), the dilution provisions, did not mean that there must be some circumstances under either Article 4(1)(b) or 5(1)(b) where a likelihood of confusion could also be absent.

 

Comment

This was the latest attempt by the Benelux legal authorities to resurrect the concept of association as a ground for infringement (or refusal to register) in its own right. Despite the ECJ’s clear ruling, it will probably not be the last. The likelihood of association is an idea developed by Benelux legal precedent over at least the last 30 years. Losing such a well established idea is obviously difficult for those brought up in the Benelux trade mark tradition. It would appear, however, that sooner or later they will have to get used to its demise.

There is now a clear line of ECJ case law which states that, where identical/similar marks and identical/similar goods are involved, a likelihood of confusion is necessary to prevent registration or to show trade mark infringement. This is a confirmation of the English Court’s interpretation of confusion/association as set out in the Wagamama case, and established long before that. In the writer’s view, the English Courts’ rigid application of the requirement of confusion can, on occasion, lead to unfair and unjustifiable results. It might therefore have been better if the ECJ had accepted that, in a case involving a highly distinctive and well known mark, confusion could be found even if consumers do not believe that the conflicting products emanate from the same source. In other words, a type of confusion that is broader than confusion as to origin, yet not as broad as mere association.

It is submitted that this would represent a sensible compromise between the English Courts’ rather rigid view of confusion and the Benelux Courts’ view which, it is believed, can find confusion in cases where it is sometimes, at least to the British eye, difficult to discern.