Scoop – Freihältebedürfnis goes to the ECJ

The IPKat has just heard from his good friend Gino van Roeyen BANNING that the dispute between Adidas and H&M, which has been keenly fought out before the Dutch Hoge Raad (Supreme Court), is going to the European Court of Justice for a preliminary reference of three questions:

1. To establish the scope of protection of a trade mark consisting of a sign that has no distinctive character ab initio or an indication that meets the definition in Article 3(1)(c) of Council Directive 89/104 on the approximation of the trade mark law of member states, but where that sign/indication has acquired distinctiveness through use and has been registered, should consideration be given to the general interest that the availability of certain signs be not unjustifiably restricted for other market parties who offer the particular goods or services (Freihältebedürfnis)? [sorry about the English – this is a mixture of Gino’s English and Jeremy’s editing]
    
2. If the answer to Question 1 is "yes", does it make a difference if the relevant public observes those signs as signs to distinguish goods, or as mere embelishment of the goods?
    
3. If the answer to Question 1 is "yes", does it make a difference if the sign that the trade mark owner attacks is devoid of distinctive character as meant in Article 3(1)(b) of the Directive, or as an indication as meant by Article 3(1)(c) of the Directive.

Willem Hoyng (Howrey) and Gino van Roeyen (BANNING) defended the case for H&M.