On 3 November 2006 the Belgian Supreme Court (Cour de Cassation) rejected an appeal that was filed by Adidas against a Belgian distributor of T-shirts and sportswear that displayed a four stripes mark similar to the famous Adidas three stripes trade mark.

In the proceedings on the merits, Adidas tried to obtain an injunction. This was rejected, mainly on the basis that the accused products were cheaper and obviously of lower quality than the Adidas products. The lower court took the view that, in all the circumstances, there were sufficient differences between Adidas’ products and the accused sportswear to prevent the average consumer (paying the normal amount of attention) from making any link between the allegedly infringing sign and the Adidas trade mark.

Adidas argued that, in considering the alleged trade mark infringement, the lower court had not correctly applied the Benelux rules on trade mark dilution. The court had compared the products on which the Adidas trade mark and the allegedly infringing sign were affixed instead of comparing Adidas’ famous trade mark as filed (and registered) and the sign that was used by the alleged infringer. As a result, Adidas had been deprived of its remedy in circumstances where its trade mark was being diluted through use of a similar sign on inferior goods.

The Supreme Court rejected this argument and took the view that the lower courts can take all the circumstances into account, including, when considering the similarity between a trade mark and an allegedly infringing sign, the way in which the trade mark and the sign are used.

To this end, the Supreme Court referred inter alia to the European Court of Justice judgments in the cases of Lloyd Schuhfabrik Meyer (22 June 1999, C-342/97) and Picasso (12 January 2006, C-361/04), where it was confirmed that in order to assess the degree of similarity between the marks concerned, it is necessary to determine the degree of visual, aural or conceptual similarity between them and, where appropriate, to evaluate the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed.

The Supreme Court took the view that the likelihood of confusion should be addressed globally and all relevant factors should be taken into account (such as the nature of the product, its price and other objective characteristics).

As a consequence, elements which were not filed in the trade mark application, which play a certain role in (the perception of) or on the trade mark, such as the quality of the product on which the sign and the trade mark are affixed, and which as such have no distinctive character, can be taken into account.

To conclude, the Belgian Supreme Court has opened the door to comparing the products on which the trade mark and the allegedly infringing sign are affixed. The infringement analysis is no longer limited to a comparison of the trade mark as filed (and registered) and the sign as used by the alleged infringer. The question remains, however, whether the lower courts will in fact start to focus on the differences between the products and set aside the usual rules regarding dilution of trade marks. If they do so, the ability of trade mark owners to prevent the dilution of their marks (through, for example, use of a similar sign on inferior products) is likely to be restricted significantly.

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