Thanks to Jim Davies for tipping the IPKat off about a competition case with a trade mark flavour. Under the Code of Conduct of the Grand Slam Committee (the organising bodies of the various tennis ‘grand slams’), players are bound by a dress code, which includes the following clause: "No identification shall be permitted on a player's clothing, products or equipment on court during a match or at any press conference or tournament ceremony, except as follows (the GSC reserves the right to interpret the following rules so as to give effect to the intent and purposes of these Grand Slam Rules)"However, ‘manufactuerers’ standard logos’ of a certain size are permitted.
Tim Henman (left) in some of the offending Adidas gear
Following the Athens Olympics, a number of sportswear manufacturers wrote to the GSC, claiming that Adidas’ use of its three-stripes logo on its clothing infringed the dress code. After some to-ing and fro-ing, Adidas brought proceedings against the GSC, arguing that the dress code was in breach of the Art.81 and 82 competition rules. The GSC sought summary judgment against Adidas’ claims.
Sir Andrew Morritt VC refused to grant summary judgment against Adidas. It was not clear, according the Vice Chancellor, that Adidas had no reasonable prospect of success in its claims based on Arts 81 and 82 of the EC Treaty. Of particular interest to trade mark lawyers is one of the Art.81 arguments employed by Adidas which goes to the heart of the nature of its three-stripes mark. Adidas argued that the Grand Slam Committee enforced its dress code in a discriminatory manner, and that this discrimination was in breach of Art.81. According to Adidas, other manufacturers employed distinctive design elements that could have identified the manufacturer, but enforcement action was only taken against Adidas. The GSC countered that there had been no discrimination because no other manufacturer had used a ‘manufacturer’s identification’ and that to fall within this definition, the distinctive design element would have to be protected by an IP rights. Adidas countered that there would be no need for such a manufacturer’s identification to be protected by an IP right [thus widening the potential pool of design elements that Adidas’ strips could be compared to in order to found its discrimination claim] and that in some cases, such as design elements protected by copyright, IP rights would be downright irrelevant. The judge concluded on the evidence that Adidas had a real prospect of success in establishing that there have been and are other manufacturers who incorporate distinctive design elements in such a way as to constitute manufacturers' identifications, but against whom no enforcement action had been taken.
The IPKat doubts Adidas’ argument, but largely on a technicality. Surely any design element that was perceived as a manufacturer’s identification would be protected by passing off, and so would give rise to a design right (albeit an unregistered one)?