The General Court has confirmed the invalidity of the Adidas three-stripe EU trade mark (No. 12442166), finding that:
- The trade mark was registered as a figurative mark, rather than a pattern mark; and
- Adidas had not demonstrated that the mark had acquired distinctiveness through its use throughout the EU.
A link to the General Court’s judgment is here.
Background
The three-stripe trade mark was registered by Adidas in 2014, along with this description: ‘three parallel equidistant stripes of identical width, applied on the product in any direction.’ Shoe Branding Europe BVBA brought an invalidity request in 2016, prompting the European Union Intellectual Property Office (EUIPO) to find that the mark lacked distinctiveness, both inherent and acquired through use. Adidas unsuccessfully appealed this decision in 2017. See our commentary here.
Adidas has since brought an appeal before the General Court, in an attempt to overturn the EUIPO’s decision.
Interpretation of the mark
Adidas argued that the EUIPO had misinterpreted the mark by assuming that it was only claimed in the specific dimensions in which it was registered. The EUIPO contended that a figurative mark is registered in the proportions shown in its graphic representation, in contrast to a surface pattern which may be produced in different dimensions and proportions (e.g. the stripes cut at a slanted angle) depending on the goods to which it is applied.
Adidas also argued that the General Court had misapplied the ‘law of permissible variations,’ which would permit the use of broadly equivalent variations of the registered mark, without affecting the distinctiveness of the mark. The Court however considered that with extremely simple trade marks such as the three-stripe mark, even minor alterations may constitute significant changes, so that the amended form was not ‘broadly equivalent’ to the unaltered mark.
Distinctiveness through use
The General Court’s interpretation of the mark meant that much of the evidence submitted by Adidas to show use of the mark was dismissed, on the basis that it did not show genuine use of the mark at issue, or a broadly equivalent mark. An example of the irrelevant evidence included images depicting sportswear where the colour scheme of the mark had been inverted so that there were three white stripes on a black or dark background and where the mark had been applied to goods outside those protected by the trade mark (e.g. sports bags).
Adidas submitted findings from consumer surveys in five EU member states to the General Court as evidence of the mark having acquired distinctiveness. These surveys did show the mark as registered, and the Court considered these ‘broadly relevant’. However, evidence from just five member states was not sufficient to show that the mark had acquired distinctive character throughout the EU. Furthermore, no evidence was produced to show that the markets of those member states that had been surveyed were comparable to the markets of those that had not been surveyed.
Commentary
Although this decision is a blow to Adidas, it of course has other trade marks in its portfolio which it can rely on when protecting its brand. However, it is set to lose a mark which would have otherwise offered quite broad protection when it came to enforcement.
The decision is a useful reminder of the following:
- Descriptions should be specific about the variations / modifications to the mark itself;
- It is important to monitor all uses of a mark to ensure that they are in the form registered, or a broadly equivalent version of the mark, especially in cases where the mark is a simple one; and
- When gathering evidence to prove acquired distinctiveness through use, it is imperative to show examples of use of the mark unaltered, so far is as possible to do so, throughout the EU and not just in a handful of jurisdictions.
How can Burges Salmon help?
If you would like to discuss any of the issues raised in this article or would like further information, please contact Jeremy Dickerson, Emily Roberts or your usual contact in our intellectual property team.