Introduction
Dutch football club AFC Ajax is one of the most successful in the world. Although AFC Ajax is particularly famous for its achievements, it is also recognised for its jersey. More than 100 years ago, AFC Ajax designed a club strip consisting of white shorts and a white shirt with a broad vertical red stripe over the chest and back, which is still used today. In 1997 AFC Ajax registered two Benelux trademarks (Registrations 0600269 and 0600270) for its red and white colour combination. The first mark consists of a red rectangle flanked by two smaller white rectangles (below left), while the other mark is a white short-sleeved t-shirt with a red rectangle in the centre.
Facts
AFC Ajax became aware that a stand outside the Amsterdam ArenA football stadium was selling AFC Ajax merchandise, including shirts and long-sleeved vests bearing the distinctive red and white colour combination. However, the garments offered at the stand were not identical to AFC Ajax's trademark registrations and did not bear other protected AFC Ajax trademarks. AFC Ajax invoked its Benelux trademarks in order to stop the trader from offering and selling the garments without its consent. AFC Ajax claimed that the merchant's acts constituted infringement under Articles 2.20(1)(b) and 2.20(1)(c) of the Benelux Convention for Intellectual Property, which are identical to Articles 5(1)(b) and 5(2) of the EU Trademarks Directive (2008/95/EC). In addition, AFC Ajax claimed that sale of the garments by the merchant qualified as an unlawful act. In his defence, the merchant submitted that AFC Ajax's trademarks were invalid because they lacked distinctive character according to the high threshold for the protection of colour trademarks.
Lower court proceedings
In 2011 the Amsterdam District Court held that sale of the garments did not constitute trademark infringement. The court agreed with the defendant that the trademarks invoked were invalid because they lacked distinctive character. However, the merchant was ordered to cease sale of the garments on the grounds that it constituted an unlawful act against AFC Ajax. On October 15 2013 the Amsterdam Court of Appeal overturned the district court's judgment and ruled that the trademarks were valid. The appeal court held that the district court had erred in applying the stringent criteria for the protection of colour trademarks as stipulated in European Court of Justice (ECJ) case law. The court found that the trademarks at issue were not colour trademarks, but rather figurative trademarks comprising a graphic representation of the two colours red and white, specifically designated and with contours. The appeal court found no objections to the validity of the trademarks.
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Introduction
Dutch football club AFC Ajax is one of the most successful in the world. Although AFC Ajax is particularly famous for its achievements, it is also recognised for its jersey. More than 100 years ago, AFC Ajax designed a club strip consisting of white shorts and a white shirt with a broad vertical red stripe over the chest and back, which is still used today. In 1997 AFC Ajax registered two Benelux trademarks (Registrations 0600269 and 0600270) for its red and white colour combination. The first mark consists of a red rectangle flanked by two smaller white rectangles (below left), while the other mark is a white short-sleeved t-shirt with a red rectangle in the centre.
Facts
AFC Ajax became aware that a stand outside the Amsterdam ArenA football stadium was selling AFC Ajax merchandise, including shirts and long-sleeved vests bearing the distinctive red and white colour combination. However, the garments offered at the stand were not identical to AFC Ajax's trademark registrations and did not bear other protected AFC Ajax trademarks. AFC Ajax invoked its Benelux trademarks in order to stop the trader from offering and selling the garments without its consent. AFC Ajax claimed that the merchant's acts constituted infringement under Articles 2.20(1)(b) and 2.20(1)(c) of the Benelux Convention for Intellectual Property, which are identical to Articles 5(1)(b) and 5(2) of the EU Trademarks Directive (2008/95/EC). In addition, AFC Ajax claimed that sale of the garments by the merchant qualified as an unlawful act. In his defence, the merchant submitted that AFC Ajax's trademarks were invalid because they lacked distinctive character according to the high threshold for the protection of colour trademarks.
Lower court proceedings
In 2011 the Amsterdam District Court held that sale of the garments did not constitute trademark infringement. The court agreed with the defendant that the trademarks invoked were invalid because they lacked distinctive character. However, the merchant was ordered to cease sale of the garments on the grounds that it constituted an unlawful act against AFC Ajax. On October 15 2013 the Amsterdam Court of Appeal overturned the district court's judgment and ruled that the trademarks were valid. The appeal court held that the district court had erred in applying the stringent criteria for the protection of colour trademarks as stipulated in European Court of Justice (ECJ) case law. The court found that the trademarks at issue were not colour trademarks, but rather figurative trademarks comprising a graphic representation of the two colours red and white, specifically designated and with contours. The appeal court found no objections to the validity of the trademarks.
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