The famous sports brand Adidas recently faced the European Union Intellectual Property Office (EUIPO) in a game over its three-stripe trademark at the General Court (GC) of the EU. On June 19, 2019 this game ended in a loss for Adidas as the GC confirmed an earlier decision of the EUIPO in which it cancelled Adidas’ EU trademark No. 012442166 depicted below:
This trademark was filed on December 18, 2013 for “Clothing; footwear; headgear” in class 25 and the EUIPO accepted the trademark for registration on May 21, 2014. When applying for this trademark, Adidas described the mark as consisting of three parallel equidistant stripes of identical width, applied on the products in class 25 in any direction. The Belgian company Shoe Branding Europe contested this registration following a decade-long dispute in connection with Shoe Branding Europe’s use of two stripes on footwear and apparel.
The EUIPO annulled the Adidas registration because it was devoid of any distinctive character. The evidence filed by Adidas to support that the trademark had acquired distinctive character through use was not accepted by the EUIPO.
The GC followed EUIPO’s reasoning and did not accept Adidas’ argument that its mark is a pattern mark composed of a series of regularly repetitive elements instead of a figurative mark. Furthermore the GC dismissed several pieces of evidence which were filed by Adidas to prove that their trademark had acquired distinctive character through use. According to the GC many specimens did not respect or depict the essential characteristics of the mark, most specifically its color scheme.
Indeed, the trademark in question consists of three black stripes against a white background whereas a significant proportion of the evidence submitted showed use of three white stripes against a black (or other color) background. These pieces where not accepted as proof of use of the registered mark. Moreover Adidas only succeeded in proving that the trademark in question acquired distinctive character through use in five Member States which is not sufficient to conclude that the trademark acquired distinctive character through use in the EU as a whole.
This decision does however not clear the path for any third party to use three stripes on its sportswear. Adidas still holds various other trademark and design registrations protecting their three stripes, but with a more limited scope of protection than the trademark cited in this case. Any attempt by other sportswear companies incorporating (three) stripes onto their apparel is likely to leave Adidas calling foul, and leading to action, not on the tennis or basketball courts, but into local trademark infringement courts.
Adidas still has two months to appeal the present decision with the EU Court of Justice (ECJ). We are curious to see whether the ECJ will give them a third strike which will result in Adidas being out and a definitive loss of the EU trademark registration No. 012442166, should they choose for such a rematch at the ECJ.
Jens DE MAERE