The IPKat thanks Gino van Roeyen of Netherlands firm Banning for tipping him off about another adidas two stripe/three stripe case.
As no doubt all the IPKat’s readers know, adidas owns the three-stipes trade mark in the Netherlands. H&M used two stripes on its clothing in 1996. adidas’ response was to bring infringement action under (in Directive terms) Arts 5(1)(b) and 5(2) which ended up in the 's-Hertogenbosch Court of Appeal. However, adidas failed on both claims.
Regarding confusion-based infringement, the visual difference between three and two stripes would stand out to consumers and prevent them from being confused.
Regarding dilution-style infringement, the court followed the ECJ’s decision in Adidas v Fitnessworld, finding that under the relevant provision, the degree of similarity between a mark with a reputation and a conflicting sign must be such that the relevant section of the public establishes a link between the sign and the mark. Here the evidence produced by adidas did not establish this since it examined the position at present, rather than proving that consumers made a link between the two sets of stripes in 1996. However, the court acknowledged that the scope of protection of a trade mark is not static and can be affected by changes in circumstances.
The IPKat notes that the Dutch court seems to be taking a different approach to similarity of marks under Arts 5(1)(b) and 5(2) respectively, otherwise the failure of the Art.5(1)(b) would have killed off the Art.5(2) claim. This has got to be the right approach following Adidas v Fitnessworld.
More things to make adidas angry here, here, here and here