A verdict has been delivered by the European Court of Justice today, stating that German sporting goods maker Adidas may oppose the registration of three parallel stripes on shoes as an EU trademark, affirming an earlier decisions by the European Union Intellectual Property Office (EUIPO).

Adidas had opposed Belgian company Shoe Branding Europe’s application for two EU trademarks for two parallel stripes on shoes as it was too similar to its own iconic three-stripe design. You can read the ECJ verdict here.

The case began when Belgian company Shoe Branding Europe filed an application with the European Union Intellectual Property Office for registration of two EU trademarks, one for footwear and the other for safety footwear. This was opposed by retail giant Adidas on the grounds that those trademarks relied, inter alia, on one of its own marks. In 2015 and 2016, the EUIPO allowed Adidas’ oppositions and refused registration of the two marks applied for by Shoe Branding Europe.

Given the degree of similarity between the marks at issue plus the reputation of adidas’ earlier mark, the ECJ has upheld the decision of the EUIPO and ruled that there is a likelihood that members of the public might confuse the marks. As a result, the Court has ruled the use of the marks applied for could take unfair advantage of the reputation of Adidas’ mark and that such use would be unjustified by due cause.

Jacqueline Pang, a trademark attorney at Mewburn Ellis, specialized in trademark prosecution, opposition and cancellation proceedings in the consumer industries in the UK and before the EUIPO, comments on the verdict:

“Today’s decisions by the General Court of the EU are unsurprising. The Boards of Appeal had simply adopted the General Court’s analysis in an earlier judgement between the same parties and taken it to its logical conclusion. That General Court decision had also subsequently been confirmed by the Court of Justice of the EU, the EU’s highest court. Ultimately it was the significant reputation of Adidas’s three stripes on footwear that won the day.”

Pang continues: “Today’s 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. Shoe Branding Europe partly shot itself in the foot. Its promotion campaign in 2007 in Spain and Portugal used the slogan ‘two stripes are enough’, which was felt to be a ‘concrete element’ in finding that it had taken unfair advantage of Adidas’s mark and also in proving that Shoe Branding’s use of its mark was not always in good faith.”

“The decision also proves that although it may be initially difficult to obtain protection for non-traditional marks, they can be well worth the effort as potentially effective and powerful weapons against third parties.However, brands should watch this space carefully. Adidas may have won the battle but the war continues. In an unrelated case last year, Shoe Branding successfully cancelled one of Adidas’s EU trade mark registrations for 3 stripes despite copious evidence purportedly showing use of the mark and this is under appeal at the General Court. The saga continues.”

 

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