Sports company giant Adidas has suffered a defeat in the EU General Court after it had declared the invalidity of the company’s EU trade mark consisting of three parallel black stripes applied in any direction on the product.

LACK OF DISTINCTIVE CHARACTER

In the judgment of Case T-307/17, the General Court indicated that the sign lacks inherent distinctive character, as well as lacking acquired distinctiveness throughout the territory of the EU under Article 7(3) of the EU Trade Mark Regulations (EUTRM). The mark was demonstrated to be recognisable as distinctive of Adidas in only five of the 28 EU member states.

Failing to prove distinctive character ensures the trade mark does not operate to identify the product(s) relating to that registrant, and so the mark cannot serve to distinguish the product from those of other undertakings, in contravention to the requirements under Article 4 of the EUTRM. .

Adidas failed to provide sufficient evidence, therefore, that consumers would immediately associate the three stripes on a product with Adidas.

BACKGROUND

The sign was originally registered as an EU trade mark in 2014 by the EUIPO in relation to class 25 clothing, footwear and headgear. EU trade marks, if granted, are valid throughout the whole territory of the EU.

However, in 2016 a Belgian company – Shoe Branding Europe BVBA, which owns the sportswear brand Patrick – filed an application for declaration of invalidity in regards to the trade mark.

EU Trade Number 12442166

The EUIPO Cancellation Division subsequently annulled the registration, stating that it should not have been registered due to its lack of distinctiveness.

Adidas appealed this decision to the EU General Court, but the recent decision did not find their favour, as the court upheld the annulment decision.

Adidas sought to argue that the mark was a ‘pattern trademark’ rather than a standard figurative mark, and so it could be extended or cut in various ways, for example in a slanted way on a pair of trainers. The court rejected this and determined the mark was an ordinary figurative mark.

DECISION AND EVIDENCE

While the court in fact agreed with Adidas that the use of forms of the mark that differed only very slightly from the registered mark could still be relevant in determining acquired distinctiveness, the evidence of use that Adidas produced was largely dismissed as it related to signs that differed too much from the registered mark.

Evidence was used, for example, of a sign showing white stripes on a black background, and this was deemed insufficient to help prove acquired distinctiveness and maintain the registration of the mark. The scope for relying on variants is low, particularly with a simple mark such as this.

NEXT STEPS

Adidas can seek an appeal of the decision to the European Court of Justice within two months of the decision, but this is limited to an appeal on a point of law only that will serve to improve the unity, consistency and development of EU law.

Adidas says it is evaluating the implications the Court’s decision, but this outcome will nevertheless unlikely be of significant detriment to the company as it notes the continued broad scope of protection it has on its three-stripe mark in various, more specifically-defined forms throughout Europe.