PROTECTING YOUR GOODS AND SERVICES UNDER DUTCH CARIBBEAN TRADEMARK LAW
Battle of the Stripes: Who will win?
Like many of its customers wearing the very popular 3-stripe pattern, Sporting goods giant Adidas enjoys a good, sportive battle with opponents. However, in the case of Adidas, the battleground is not the football pitch, or the basketball or tennis court, but the legal arena. And, unlike many sports games, it is not (just) about honor or glory. For Adidas, the stakes are much higher. What’s at stake is the scope of protection of its very famous, and commercially valuable, 3-stripe trademark which can be seen on the clothes and equipment of some of the world’s most famous sports teams [soccer clubs like Bayern Münich, Real Madrid and the German ‘Mannschaft’] and personalities [like soccer star David Beckham, Olympic swimming champion Ian Thorpe and Justine Henin, the current women’s tennis number one].
When it became aware that several companies were using a 2-stripe pattern on their clothes, Adidas, based on its trademark, instigated legal proceedings in which it sought a court order to prevent these companies from using the 3-stripe pattern, or similar patterns such as the 2-stripe pattern. One of the big questions in the legal fights is whether or not public interest, in not unduly restricting the use of certain signs by competitors (the requirement of availability), should influence the scope of protection of a trademark that was initially not distinctive, or that was strictly descriptive, but has acquired distinctiveness through (intensive) use. This question is now before the European Court of Justice for a so-called preliminary ruling.
Although the concept of public interest (the need to keep certain signs free for use by all) is a familiar one in trademark law, developed as argument for absolute refusal grounds such as descriptiveness, it up till now only played a role in the application for registration. Adidas is of the opinion that the ‘public interest test’ may not (once again) come up in the context of the scope of protection of the (registered) trademark. This is an important question, and the implications and possible impact of the Court’s decision to follow may be significant. If it is decided by the Court that the public interest test also applies after a trademark has been registered, i.e. in the infringement phase, then all trademarks that initially lacked distinctive character but which acquired distinctiveness through use could potentially face a narrower scope of protection, even if they are very famous. Meaning, in the case of Adidas e.g., that other stripe patterns, based on the argument that they should be available for third parties, do not fall within that protected scope.
It should be noted that the question put forward to the Court pertains to the European Trademarks Directive. The Netherlands Antilles is not subject to EU legislation and is therefore not affected by it. However, the Dutch Caribbean legal system, including its statutory provisions governing the right to use trademarks for the purpose of distinguishing goods and services from those of others (set forth in the Trademarks Ordinance), is based on the same or similar legal ideas and concepts. Thus, in the case of trademarks for instance, Dutch Caribbean law enables companies and persons to protect their intellectual property (such as patents; trademarks; and copyright) adequately and in accordance with national and also international standards.
Karel Frielink / Ursus van Bemmelen
Dutch Caribbean Attorneys / Lawyers
