Date: 27 September 2018
Another trade mark case involving footwear has been reported, this time involving the position of stripes on footwear; in particular, the long running saga of the Adidas threestripe mark (Shoe Branding Europe BVBA v EUIPO; T-85/16).
The Belgian footwear company Shoe Branding had filed a EUTM application for a position mark consisting of two parallel lines covering “safety footwear for the protection against accidents or injury” in Class 9:
This EUTM application was opposed by adidas AG on the basis, inter alia, of an earlier EUTM registration for a figurative mark covering footwear in Class 25:
The opposition was rejected by the Opposition Division, but the Second Board of Appeal took a different view. Given a certain degree of similarity between the marks at issue, the similarity of the goods covered by those trade marks and the high reputation of the earlier mark, there was a likelihood that the relevant public might establish a link between the marks at issue and that the use of the mark applied for could take unfair advantage of the reputation of the earlier mark, without that use being justified by due cause.
Having drawn that conclusion, the Board upheld the appeal and allowed the opposition on the basis of Article 8(5) of Regulation No 207/2009. Shoe Branding appealed to the (European) General Court (GC). The GC agreed with the Board and allowed the opposition.
It was common ground that adidas had challenged the use by Patrick International SA (a predecessor of Shoe Branding) of a mark consisting of two parallel stripes affixed to a shoe and that, by a judgment of 12 November 1990, the Landgericht München (Regional Court, Munich, Germany) prohibited that company from marketing its goods bearing that mark because there was a likelihood of confusion with adidas’ earlier national marks. There had also been opposition proceedings between the parties in 2004 and 2010 and, therefore, the coexistence of the marks at issue could not be categorised as “peaceful”. The GC also noted that the slogan “two stripes are enough” had been used in a 2007 promotional campaign run in Spain and Portugal to promote goods sold under the mark featuring two stripes.
In view of the above, the GC ruled that the EUIPO had been correct to find:
Accordingly, the GC dismissed the action and ordered Shoe Branding to pay the costs.
However, this is not the end of the battle of the stripes. In 2014, Shoe Branding filed a request for a declaration of invalidity against adidas’ EUTM registration number for a figurative mark described as consisting of “three parallel equidistant stripes of equal width applied to the product in whichever direction” covering “clothing, footwear; headgear” in Class 25:
Shoe Branding argued that the mark lacked distinctiveness and that the mark was positional not figurative. It submitted that the Office should have invited adidas to remedy the discrepancy by changing the mark type to “other”. In Case R 1515/2016- 2, the EUIPO’s Second Board of Appeal agreed, pointing out that the exhibits (such as the one below) showed doubtful use, because the marks consisted of two not three parallel black (or dark) stripes against a white (or lighter coloured) background:
The Board found other items of proof even less convincing; for example, in the logo shown below “the figurative element is so completely eclipsed by the word ‘Adidas’ that it looks like mere decoration”:
The EUIPO held that the mark lacked “secondary meaning” or “acquired distinctiveness” and ordered that the registration be removed from the EU Trademark Register. Adidas appealed the decision, and this is due to be heard by the GC this year.
It will be interesting to see whether the GC agrees with the EUIPO’s reasoning that the chance of stripes being seen as denoting a connection with a specific clothing provider is equal to the chance of stripes being “perceived as a simple decoration on a shirt or hat“. On the other hand, the EUIPO also said that “a different conclusion might be reached if the contested mark contained something in addition to the three vertical lines, that is to say something that would draw attention to the lines or make them stand out against a particular background. The lines might, for example, be stylised or placed inside a geometrical figure, such as a square, a circle or a pentagon or set into a differently coloured background”. This suggests that - should the GC agree - applicants wanting to err on the side of caution should try to protect trade marks for stripes in every colour in which they wish them to be used. Stay tuned!