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‘Availability’ is No Defence to Trademark Infringement

Wednesday, 22 May 2013

A trade mark is used to distinguish goods and services provided by a brand, from its competitors. A registered trade mark can offer protection to a brand’s reputation and ensure that consumers are not misled when purchasing goods and services.

The seminal, 2008 ‘Adidas’ European Court of Justice (ECJ) ruling may have afforded extra trademark protection to well-known brands. The ECJ dismissed the ‘availability’ argument in relation to trade mark infringement.

This means that the public interest in keeping generic signs such as stripes generally available for use will not be a factor taken into consideration in relation to the assessment of potential infringement.

Trademark Registrability

In order for a trade mark to be legally enforceable, it must be registered with the Intellectual Property Office (IPO). The IPO states that trademarks are acceptable if they are distinctive for the goods and services that a brand provides.

This gives the effect that they will be acceptable if the trade mark can be recognised as a sign that differentiates goods of one brand from another. A trade mark will not be registrable if it describes the goods or services or any characteristics of them such as their quality, quantity, purpose, value or geographical origin.

Trademarks that incorporate generic signs such as stripes may be registrable in certain circumstances but this will not prevent the general use of such ‘non distinctive’ signs. This ‘availability’ suggests ‘non distinctive’ marks shouldn’t be afforded protection that is too broad and restrict them from other commercial uses.

When the Use of Generic Signs Might Infringe a Trademark

The ECJ’s ruling in favour of global brand Adidas highlighted that the need to keep certain signs free for use by competitors in terms of registration but that such availability was not a factor to be taken into account when assessing the extent of a trade mark holder’s rights in cases of potential infringement.

The ECJ ruled that through marketing, Adidas’s brand had grown exponentially into a recognised household name. As a result, the ostensibly ‘non distinctive’ three stripe logo acquired distinctive character through its use. Adidas initially sought an injunction in the Dutch national court who found no infringement by a manufacturer who produced a garment embellished with a similar two stripe motif as decoration.

The ECJ had to decide whether the average consumer would make a connection with the well-known mark upon seeing a sign which is similar to it and whether such usage takes “unfair advantage” of or is detrimental to the distinctive character of the trade mark. On both of these factors the ECJ answered without regard to the availability requirement.


The ECJ decision may provide large brands such as Adidas with greater protection of their trademarks despite using generic traits such as stripes but it is unlikely that lesser known brands would be afforded the same level of protection in such circumstances.

If you would like advice regarding the protection of intellectual property please contact James Crichton via e-mail or by telephone on 0207 611 4848.