Adidas has lost its EU trademark of “three parallel equidistant stripes of identical width, applied on the product in any direction”, which was registered in 2014 after the General Court of the EU ruled this mark was not “distinctive” enough.

Adidas first registered a variation of its three stripe logo back in 1949. In 2014 Adidas registered a figurative trademark which consisted of three equidistant parallel lines which could be applied on clothing, footwear and headgear in any direction (“the 2014 Trademark”). The rational behind this decision appears to be so that Adidas could expand its brand protection beyond the distinctive logos which it already had registered trademarks to protect.

However, following the registration of the 2014 Trademark it was challenged by Shoe Branding Europe BVBA (“Shoe Branding”) who filed an application for a declaration of invalidity of the trademark on the grounds that it was devoid of distinctive Character. For context Shoe Branding is a Belgian footwear brand who has a 2 stripe logo and they have been involved in a long running dispute with Adidas since July 2009 when Adidas opposed their trademark application to place two stipes on its footwear on the basis that Shoe Branding’s 2 stipe logo was “confusingly similar” to its own 3 stripe trademark.

Shoe Branding were initially successful and their 2 stripe logo was registered as a trademark. However, Adidas later appealed the decision to the European Union General Court which overturned the original decision. Shoe Branding appealed this decision to the Court of Justice of the European Union who upheld the decision of the European Union General Court. It was during these ongoing proceedings that Shoe Branding issues a separate claim to the European Union Intellectual Property Office (“EUIPO”) to have the 2014 Trademark declared invalid.

EUIPO found against Adidas as they stated that the 2014 Trademark lacked distinctive character and so the 2014 Trademark should be cancelled. Adidas appealed this decision in the first instance to EUIPO and latterly to the European Union General Court arguing that the 2014 Trademark had acquired distinctive character through use. On each occasion Adidas were unsuccessful and so as matters stand the 2014 Trademark has been cancelled. However, it should be noted that Adidas has a number of other registered trademarks upon which it can rely.

Although it should be noted that this may not be the end of the case as Adidas may still appeal to the highest court in the EU system being the Court of Justice of the European Union.

Conclusion

What this whole saga demonstrates is that owners of trademarks should be careful when considering whether or not to take enforcement action against other companies as there is a risk that your opponent may apply to have your trademark declared invalid where it is too generic and devoid of distinctive character. This is true in this case even where the mark was arguably synonymous with the Adidas brand.  It is therefore often advisable to reach an out of court settlement at an early stage in trademark disputes to ensure that your registered trademark does not come under attack particularly if it lacks distinction.

This blog was written by:  Sam Pepper

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