In a recent case, the General Court upheld the Board of Appeal’s decision, and invalidated one of Adidas’ three stripe EU trade mark registrations. Whilst Adidas did not appeal the Board of Appeal’s finding on lack of inherent distinctiveness, they appealed the finding on acquired distinctiveness.
The three stripes trade mark in question had been registered since 2014 in relation to clothing, footwear, and headgear in class 25 and was now being challenged by a competitor Shoe Branding Europe BVBA. Adidas’ trade mark consisted of this image:
On the register the mark was described as ‘consist(ing) of three parallel equidistant stripes of equal width applied to the product in whichever direction’, and the figure depicted was three black (or dark) stripes on a white (or light) background. Adidas filed evidence of use of the mark (and variations of the mark) on clothing, bags, and shoes to support the claim to acquired distinctiveness. In addition, Adidas’ evidence was also intended to prove that the registered mark was a pattern, and thus could be used in various forms.
The General Court held that when a trade mark is extremely simple, like the Adidas three stripe mark, even minor changes can affect the mark’s distinctive character. In such cases, variations of the mark may not be considered as equivalent to the registered mark. Adidas provided evidence of use that deviated from the registered mark including: by use of inverse colours (three white/light stripes on a black/dark background), by use of three stripes in a different scale to that of the registered mark, and by use of stripes applied diagonally. Examples are here:
Since a majority of the evidence provided by Adidas related to these variations of the mark, the evidence was held not to represent the mark as registered (or any permissible variation) and, accordingly, the evidence could not support the claim to acquired distinctiveness. In addition, the General Court held that Adidas had registered a figurative mark, not a pattern mark, and as a result the mark had to be used as registered, and despite the description of the mark that Adidas included, could not be extended, cut, or applied in various directions.
Adidas also presented evidence including 23 market surveys to show acquired distinctiveness. However, 18 of the market surveys were in relation to variations of the three stripes, which differed from the registered mark, and thus again were deemed irrelevant. The General Court held that the remaining 5 market surveys, which only covered Germany, Estonia, Spain, France, and Romania, did not prove use of the mark in every Member State and therefore had not proven acquired distinctiveness throughout the territory of the European Union. The court held, consequently, that the registration must be declared invalid.
Adidas has not indicated if they plan to appeal the decision. However, even if Adidas does not appeal, they have several other EU registrations for their three stripe mark in various forms, which still allows broad protection of their three stripe mark.
The case nevertheless gives clear warning to registered proprietors that for simple figurative trade marks, minor variations in form or format may not support their existing registrations. If full protection is required for the variations, multiple registrations will be required.
By Rachel Christenson