Brussels, 17/01/2008 (Agence Europe) - Advocate General Ruiz-Jarabo Colomer Dámaso gave his response on 16 January to questions from the Hoge Raad (Dutch High Court), to which the sports equipment manufacturer Adidas had gone to defend its three stripe trademark, which appears on its whole product range. The Hoge Raad asked if, in this instance, there had to be a “need to leave free”: according to the Advocate General, this principle should only be taken into account if the sign concerned serves to communicate general information about the product without allowing the maker to be identified. It will, then, be up to Dutch law to decide if this is the case.
German company Adidas AG and its Dutch subsidiary Adidas Benelux BV took sportswear manufacturers Marca Mode CV, C&A Nederland, H&M Hennes & Mauritz Netherlands BV and Vendex KBB Nederland BV to court in the Netherlands. These companies had marketed products on which the seams had been concealed and reinforced by means of two stripes of contrasting colours, similar, Adidas claimed, to its registered trademark of three stripes. While no one is disputing the similarity between these signs, what has to be determined is whether or not these stripes are sufficiently non-specific in nature that another company should be able to use them on its goods without breaching Adidas' intellectual property. In European law, there exists the concept of “need to leave free” (French “impératif de disponibilité”, German “Freihaltebedürfnis”). This states that a manufacturer cannot use protection of intellectual property as a reason for preventing the use of a mark which gives general information on its products, such as where it was made, or what it is used for. “Made in …,” marks and “tin opener” for example, are, therefore, not protected since they have to be left free for companies which need them.
The Advocate General acknowledges that the three stripe trademark deserves some protection in the light of the effort and expense to which Adidas has gone to create an awareness and a sign that is recognisable to consumers (by means, for example, of sponsoring athletes). Whether or not this protection should be subordinate to the need to leave free, the Advocate General says that this should only apply if the sign can be used to describe, in trade, certain characteristics of the product. According to Article 3 paragraph 1 of Directive 89/104/EEC, this covers “the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods”. However, if the three stripes do not have one of these functions and are quite simply “devoid of any distinctive character”, competitors have no real need to use similar signs, and there is justification for arguing the case for the Adidas trademark, without any reference to the need to leave free. If the Court accepts this opinion in its judgment, it will leave it up to the Hoge Raad to decide which yardstick to use in considering this case. (C.D.)