Lawyers are advising UK retailers to halt the sale of goods that bear patterns resembling the three-stripe Adidas trademark or face legal action, following a ruling by the European Court of Justice.
The ECJ has clarified a section of intellectual property law dealing with shapes, during a hearing between Adidas and a group of Dutch retailers including H&M. Adidas is suing the retailers for trademark infringement after they sold clothes featuring two stripes.
H&M had been arguing under an IP guideline called Requirement of Availability, which recommends that if used for embellishment, shapes should be available for all to use.
But the ECJ has ruled that, as long as Adidas can prove the public associates stripes with its brand, national courts have the power to find in its favour.
Adidas welcomes the ruling, saying, ‘It strengthens the protection of famous trademarks in Europe, and will benefit us in the protection of our famous three-stripes trademark. In protecting our trademark, we do not seek to prevent the use of decoration, but the use of striped markings that confuse consumers, or cause them to make a link with our company.’
The case is being referred back to the Dutch courts.
Fiona McBride, a trademark attorney with Withers & Rogers, says, ‘If the Dutch court ruling goes in Adidas’s favour, it will be in a very strong position to sue companies producing goods with two stripes in other countries.’
However, the fame of its trademark could work against it, says McBride. ‘The stripes are so well-known that you could argue most people are aware that Adidas has three stripes rather than two or four.’
The ruling has broader implications for all retailers, manufacturers and brands that use shapes as part of their trademarks, says McBride.
The Dutch courts are expected to pass a verdict on the case in 2009.