The name Adidas is not new, and neither are its products. But in a major twist and what appears to be a blow, the European Court has ruled that the “three stripes” brand/trademark of Adidas was not distinctive enough.

The First Battle

Interestingly though, the decision does not happen to be first of its kind against the German sporting merchandise company. . In the year 2003, Adidas lost out to the Dutch company ‘Fitness world’, which was using a two-stripe design for its products. The issue in this particular matter was that Adidas alleged that the two-stripe design motif used by ‘Fitness world’ was suspiciously similar to Adidas’s three-stripe design and that the continued use of the same by the Dutch company would lead to a a possibility of confusion in the minds of the public with respect to the products of the two.

But the Court did not accept this contention and instead pointed out that the two- stripe motif used by Fitness world was limited to  ‘decorative purposes’ and that Adidas being the proprietor of the trademark with a reputation cannot prevent the use of a similar sign meant for a specific purpose, in this case ‘decorative motif,’ thus putting aside Adidas’s claim on the stripe motif.

Registration and Subsequent Annulment

It is pertinent to note that the said mark of Adidas was registered in 2014 by the European Union Intellectual Property Office (EUIPO).

However, in 2016 the same was annulled by the EUIPO as a result of an application for declaration of invalidity filed by the Belgian undertaking, Shoe Branding Europe BVBA stating that the mark should NOT have been registered in the first place, as it was devoid of ‘distinctive character’

While upholding this decision for annulment, the General Court made the following observations: –

·       That the mark is NOT a pattern mark but merely an ordinary figurative mark

·       That the various forms of use fail to respect the essential characteristics of the mark i.e. is to say Black stripes against White background

·       And that as previously pointed out, Adidas is not able to establish that the mark had acquired distinctive character throughout the territory of the European Union through Use, as claimed for  the evidence produced by Adidas relates to only five Member States and cannot, in the present case, be extrapolated to the entire territory of the EU which comprises of twenty eight member nations.

Distinctive Enough..?

 The judgement is surprising given that it involves a giant like Adidas which is popular globally.  But the major take-aways in the present case seem to be that Adidas were unable to establish that the mark had become distinctive in all the territories of the European Union and that the three-stripe was not exactly distinguished (as per the Court)..the question seems to have been not if the mark was distinctive but “distinctive enough.”

 

 

Background photo created by fanjianhua – www.freepik.com

Editorial Staff

Editorial Staff at Selvam and Selvam is a team of Lawyers, Interns and Staff with expertise in Intellectual Property Rights led by Raja Selvam.