The Device Of Two Parallel Stripes: The Long Drawn Out Battle

The European Union General Court had recently decided (here) that the Boards of Appeal of the European Union Intellectual Property Office had correctly rejected the application for European Union Trade Mark Application No.: 8 398 141, overturning the initial decision at the Opposition Division of the European Union Intellectual Property Office.

The conclusion of this matter has been a long drawn out process of thug and war between adidas AG and Shoe Branding Europe BVBA, which began in July 2009 when Shoe Branding Europe BVBA filed an application to register the European Union Trade Mark Application No.: 8 398 141 in Class 25 for “footwear”, a position mark represented as:-

Three Stripes

Three parallel equally spaced stripes applied to footwear, the stripes positioned on
the footwear upper in the area between the laces and the sole.

The Early Stages

Thereafter, in September 2010, adidas AG filed an opposition at the European Union Intellectual Property Office, citing that Shoe Branding’s trade mark application was confusingly similar, and that use of the application mark will take advantage of, or be detrimental to, the distinctive character or repute of the earlier marks of adidas AG. The opposition was eventually rejected by the Opposition Division of the European Union Intellectual Property Office.

Subsequently on July 2, 2012, adidas AG appealed the opposition decision but to no avail. The Boards of Appeal agreed with the Opposition Division and dismissed the appeal on the grounds that:-

“the trade marks at issue were different overall and that that fact was sufficient, first, to rule out any likelihood of confusion on the part of the relevant public within the meaning of Article 8(1)(b) of Regulation No 207/2009, and secondly, to make it unlikely that the same public would establish a link between the trademarks at issue, and, consequently, that any of the types of injury referred to in Article 8(5) of that regulation would occur (‘the decision of 28 November 2013’)”

Unsatisfied with the decision at the Boards of Appeal, adidas AG went to the General Court of the European Union and appealed. It was at this stage that adidas AG first tasted victory, when the General Court annulled the decision of the Boards of Appeal of November 28, 2013 on the grounds that:-

“the Board of Appeal had wrongly concluded that there was no similarity whatsoever between the marks at issue and that error of assessment had distorted the Boards of Appeal’s assessment as to whether there was, on the part of the public, likelihood of confusion or, a fortiori, a likelihood that a connection would be made between the marks at issue”

The reaction from Shoe Branding Europe BVBA was to appeal to the European Court of Justice, but it failed when the Court of Justice dismissed its appeal.

The cause and effect of annulling the judgment and of the order on the appeal, the Second Board of Appeal of the European Union Intellectual Property re-examined the appeal initiated by adidas AG, against the decision of the Opposition. It was at this juncture that adidas AG, tasted victory again. By decision dated June 8, 2016, the Board of Appeal upheld that appeal and allowed the opposition on the basis of Article 8(5) of Regulation No 207/2009. In particular, it considered that, given a certain degree of similarity between the marks at issue, the identity between the goods covered by those trade marks and the high reputation of the earlier mark, there was a likelihood that the relevant public might establish a link between the marks at issue and that the use of the mark applied for could take unfair advantage of the reputation of the earlier mark, without that use being, in the case at hand, justified by due cause.

It was at this juncture that Shoe Branding Europe BVBA appealed to the European Union General Court, where the General court concurred with the Boards of Appeal.

Reputation Of Adidas

This judgment noted that adidas AG had furnished comprehensive evidence that showed it held a considerable amount of market share, through surveys, within different European countries, and that seventy percent of its goods sold bears the earlier mark. Adidas AG also furnished evidence of their advertising expenditure, and showed significant amount of sponsorship activity.

All this evidence went to show that the general public had associated its mark with footwear.

Furthermore, adidas AG provided a slew of decisions from various national courts which decided that adidas AG had reputation in regards to the three parallel stripes.

Finally, It was apparent that Shoe Branding BBVA’s ultimate flaw was comparing its brand to adidas AG in a 2007 promotional campaign in Spain and Portugal stating “two stripes are enough”. Shoe Branding BBVA did not dispute the use of the slogan, and the General Court stated that “using such a slogan sought to call to mind the earlier mark, known to the consumer by virtue of its reputation”.

The success of adidas AG in this matter shows the commitment that it has invested, in this case and others, in protecting its well known three parallel stripes mark, in the market.

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