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1 March 2018Trademarks

EU court rules in favour of Adidas’s three-stripe mark, again

The reputation of Adidas’s ‘three-stripe’ trademark has prevailed for a second time against a Belgian shoe company at the EU General Court.

Two judgments related to the matter were delivered at the Ninth Chamber of the EU General Court today, March 1. The judgments are available, here and here.

Belgian company Shoe Branding Europe filed to register two trademarks with the European Union Intellectual Property Office (EUIPO) in 2009 and 2011, for footwear and safety footwear. The marks feature two stripes positioned at an angle.

German sports brand Adidas opposed the registrations based on its own ‘three-stripe’ mark, which is registered for footwear in international class 25 (EU number 3,517,646).

Initially the EUIPO’s Opposition Division rejected Adidas’s opposition, as did the Second Board of Appeal in November 2013. However, the EU General Court disagreed in May 2015, finding that Shoe Branding’s marks would cause a likelihood of confusion between the brands and annulling the appeal board’s decision.

On appeal to the Court of Justice of the European Union (CJEU), the Belgian company argued that its two-stripe marks had coexisted with Adidas’s mark over many decades with no evidence of confusion so the finding of a likelihood of confusion was incorrect.

Shoe Branding also said that the different length of the stripes was sufficient to distinguish between its own marks and Adidas’s ‘three-stripe’ mark.

In February 2016, the CJEU noted that Shoe Branding did not raise its coexistence argument with the General Court, so the CJEU’s finding of a likelihood of confusion on the evidence provided was correct.

Following the CJEU’s decision, the EUIPO’s Second Board of Appeal then reexamined the appeal brought by Adidas in relation to the Opposition Division’s ruling.

In June 2016, the appeal board upheld Adidas’s appeal and refused to register Shoe Branding’s marks.

Shoe Branding brought an action against the refusal, bringing the matter to the EU General Court for the second time.

It alleged that the EUIPO, in its second assessment of the two marks, had failed to carry out its “own analysis” and a “global assessment of the likelihood of confusion”, and had instead adopted the earlier decision of the CJEU.

Today, the General Court held that the office had correctly “considered it likely that the relevant public would establish a link between the marks at issue” and that the applied-for marks risk taking “unfair advantage” of Adidas’s earlier mark and the reputation associated with it.

Jacqueline Pang, trademark lawyer at Mewburn Ellis, said the "significant reputation" of Adidas's earlier mark was central to the ruling.

With regard to the co-existence argument, the court confirmed that a “peaceful nature” of coexistence may decrease the likelihood of confusion but that, in this case, there was not a “peaceful” coexistence, as evidenced by Adidas’s opposition and the present proceedings.

The court went on to say that “the higher the reputation of the earlier mark, the more likely it is that the use of a similar trademark will take advantage”.

It concluded that in cases where the applied-for mark reflects “qualities of the earlier” mark, actual injury need not be proven and the “risk of such an injury materialising” is sufficient.

The court dismissed the appeal and ordered Shoe Branding to pay the costs.

Pang said that the decision will make it "much harder for third parties to get away with adopting a mark with only minor variations to that of Adidas’s three stripes", such as adding or removing a stripe or changing its direction.

However, "the war" of the brands continues. She added that in an unrelated case last year, Shoe Branding successfully cancelled one of Adidas’s EU trademark registrations for three stripes "despite copious evidence purportedly showing use of the mark".

Adidas has appealed but "the saga continues".

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