27 Aug 2019
EU Court Rules on Adidas Three-stripe EU Trademark Used for Clothing, Hats and Shoes
The General Court of the European Union (General Court) has denied the appeal made by Adidas AG (Adidas), the well-known German sportswear manufacturer, to overturn a decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO). The General Court thereby refused the registration of Adidas’ three stripes as a figurative trademark, which Adidas uses as a pattern. Adidas said its trademark consisted of "three parallel equidistant stripes of equal width applied to the product in whichever direction" but this was challenged by Belgium's Shoe Branding Europe, after a long-standing dispute with Adidas.
The background of the case is as follows. Adidas filed an application with the EUIPO for registration of an EU trademark. Adidas qualified the three stripes as a figurative trade mark in its request for registration and described it as follows: “The mark consists of three parallel equidistant stripes of equal width applied to the product in whichever direction”. Thereafter, Adidas registered the trademark with the EUIPO for clothing, hats and shoes.
After that, the Belgian firm Shoe Branding Europe BVBA filed an application for declaration of invalidity of the mark.
Both the Cancellation Division, in first instance, and the Second Board of Appeal of the EUIPO, on appeal, found that the trademark should not have been registered, since it was in breach of Article 7(1)(b) of Council Regulation No 207/2009 on the European Union Trademark. According to the Second Board of Appeal, Adidas failed to establish that its mark had gained a distinctive character through use across the EU. The EU’s General Court has now confirmed this decision. According to the General Court, the sign was not sufficient to identify the products as associated with the brand.
In its judgment, the General Court first noted that, contrary to what Adidas argued, the trademark is not a pattern mark consisting of a series of regularly repetitive elements, but rather an ordinary figurative mark. As such, the Second Board of Appeal of the EUIPO did not misinterpret the trade mark as a figurative mark. The General Court also agreed with the Second Board of Appeal of the EUIPO that it is not possible to take into consideration forms of use that do not honour the other vital features of the registered mark, such as its colour scheme. Indeed, Adidas submitted an abundance of evidence showing white stripes against a black background, whereas the trademark at issue consists of black stripes against a white background.
Lastly, the General Court found that Adidas did not demonstrate that the trademark at issue is used across the territory of the EU because Adidas failed to prove the use in all EU Member States. It said the company only provided evidence of its “acquired distinctive character” in five out of the EU's 28 Member States. As such, the trademark “cannot, in the present case, be extrapolated to the entire territory of the EU.”
As a result, the General Court concluded that the evidence before it was insufficient to establish that the trade mark had acquired, in the whole EU territory, distinctive character following the use which had been made of it.
The General Court ruling appears to address issues affecting the specific elements of the sign that Adidas filed, and how Adidas sought the registration. In particular, Adidas presented the trademark as a figurative mark or a logo, but Adidas intended to use it as a pattern. Moreover, Adidas filed the trademark in a colour scheme different from that which is most often used.
Regardless of the foregoing, Adidas owns many more trademarks that involve three equidistant stripes. While Adidas wanted to prevent other clothing and footwear companies from using a mark “consisting of three parallel equidistant stripes of equal width applied to the product in whichever direction”, the ruling only confirms the refusal of an EU wide trademark. The Adidas brand can still protect its stripes at national level.
Adidas commented in a statement that the court ruling was limited to a “particular execution” of the three-stripe mark and did not impact other protected uses of the trademark in Europe. “Whilst we are disappointed with the decision, we are further evaluating it and are welcoming the useful guidance that the court will give us for protecting our three-stripe mark applied to our products in whichever direction in the future” it is reported to have stated.