European Union: Adidas Three Stripes Trademark Revocation

Last Updated: 8 July 2019
Article by Mark Gatt

In a judgment of the General Court of the European Union of the 19th June 2019, Adidas saw their hopes of extending their three stripes trademark dashed, as the court ruled that there was no distinctiveness in the three stripes trademark. Furthermore, the court held that the Adidas had failed to prove that the mark had acquired distinctive character through use throughout the member states of the EU.

The case dates back to a 2016 application for an annulment brought by the Belgian company, Shoe Branding Europe BVBA, before the EUIPO, which action for annulment was upheld on the ground that the mark was devoid of any distinct character both inherent and acquired. Furthermore the EUIPO held that, given that Adidas had failed to furnish sufficient proof that the mark had acquired a distinctive character through use in the member states, then such mark should not have been granted protection in the first place.

The court in its judgment upheld the same reasoning as the EUIPO stating that "the mark is not a pattern composed of a series of regularly repetitive elements but an ordinary figurative mark". The court also pointed out that the forms of use, which fail to respect other essential characteristics such as the mark's colour scheme, should not be taken into account when assessing the distinctiveness of the mark.

This judgment can be seen as a huge blow to Adidas and might result in an erosion in its valuation. In fact, share prices were down by 1.8% following the judgment.

This judgment was largely decided on a point of procedure, that is, on the amount of evidence produced by Adidas to show widespread use of the mark within the EU and to thus prove that it had acquired distinctive character. Adidas only provided proof of use of the mark in five member states which the EUIPO, and subsequently the court, ruled was not sufficient. Had Adidas been more diligent and provided proof of more widespread use, it is likely that the outcome of the decision would have been quite different.

This judgment was a culmination of a decade long battle with Shoe Branding Europe, who last year had their own two-stripe trademark invalidated due to its similarity to Adidas' three striped trademark. The Belgian company bought Patrick in 2008, which company was founded in 1892, and thus claim that their mark has been around much longer. Patrick's mark features two stripes which, however, are in an opposite direction to those found on Adidas' shoes and clothing.

This judgment therefore opens up a number of possibilities. Firstly, it may allow Shoe Branding Europe to appeal its own ruling and get their mark registered on the basis that the Adidas mark has been revoked. This, however, is quite an unlikely scenario given that Adidas enjoys other trademark protection within the EU. The second possibility is that Adidas will be able to overturn the judgment. Thirdly, and the most unlikely scenario, is that both marks will be granted protection and registration and must therefore coexist together. The court is unlikely to take this approach as it might cause confusion on the average consumer and would therefore run counter to the intended nature and purpose of trademark registration and protection.

The most likely scenario is that both marks will not be granted registration. Such scenario will create some ambiguity as to whether third parties may make use of the three stripes design or some variation of it on their own goods and branding. Adidas will have to get creative in protecting its interest by relying on its other registered trademarks to try and keep hold of the three stripes mark, in the hopes of a fresh application being made and the necessary proof furnished to show that it does indeed satisfy the requirements of acquired distinctiveness through widespread use. It would be devastating for Adidas' hopes of staking a permanent claim on the three stripes mark in the future, were it to allow third parties to freely make use of the mark without raising any objections. Should a third party start making use of the mark on a wide scale and beat Adidas to the punch and be granted registration, this will have a far greater ripple effect as to their brand valuation and market share.

This case highlights the need for greater care when presenting evidence to sustain claims of acquired distinctiveness through use. The court has gone beyond requiring proof of use in some member states as is traditionally required to prove prior use, but has shown that use across the majority, if not all member states, must be proven in order for the plea of acquired distinctiveness through prior use to be upheld

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions