Adidas trademark ruling: the three-stripe saga continues
As reported by World IP Review last week, the EU General Court ruled (again) in favour of German sports brand Adidas in two cases involving its three-stripe mark for shoes. The cases form part of a long-lasting trademark dispute with the Belgian company Shoe Branding Europe.
In last week’s judgments, the General Court upheld Adidas’s oppositions against two trademark applications filed by Shoe Branding in 2009 and 2011. Both opposed marks featured two parallel stripes (tilted right) running from the sole edge of a shoe to the middle of the instep. The mark applied for in 2009 sought protection for regular footwear and had already made its way up to the Court of Justice of the European Union (CJEU) once before (see the previous report here). By contrast, the mark applied for in 2011 covered protective footwear only and had not previously been at stake before the EU courts.
Adidas opposed both marks based on its figurative EU trademark (EUTM) covering footwear and depicting a shoe with three parallel stripes (tilted left) placed between the sole and the laces. Adidas argued that use of the marks applied for would take unfair advantage of the repute of its three-stripe mark.
The General Court endorsed this view. The earlier mark was considered to enjoy a “power of attraction, linked to an image of quality and prestige, acquired after decades of investment, innovation and publicity”. In the event of use of the opposed marks, the positive qualities associated with goods bearing the reputed three stripes would be unfairly transferred to Shoe Branding’s goods, the court reasoned. This conclusion was reached with regard to use on both the regular and the protective footwear applied for by Shoe Branding.
The decisions shed further light on the type of evidence that is suitable in opposition proceedings to show a risk of unfair advantage. While it is not necessary for the opponent to demonstrate actual and present harm to its mark, there has to be prima facie evidence of a future risk. A merely hypothetical risk is not sufficient, but the EU courts typically rely on “logical deductions” without requiring evidence of how consumers actually perceive the conflicting marks.
In the present case, the General Court was apparently swayed by the fact that Shoe Branding, or one of its licensees, alluded to the three-stripe mark by using the slogan “two stripes are enough” in a promotion campaign. In the view of the court, such behaviour had to be regarded as an attempt to exploit the reputation of the three-stripe brand, which in turn was deemed to confirm the possibility of unfair advantage being taken in the future.
