Adidas has been handed a significant loss in the European Union, where the European Union Intellectual Property Office (“EUIPO”) recently found that one of the German sportswear giant’s 3-stripe trademarks does not amount to a valid trademark registration.
The decision stems from the ongoing battle between adidas and Belgian footwear company, Shoe Branding Europe BVBA, the latter of which filed a request for a declaration of invalidity in connection with adidas’ 3-stripe mark in 2014. The move came adidas filed a trademark infringement suit against BVBA, alleging that a BVBA shoe bearing 2-stripes was too similar to its own 3-stripe design.
While adidas won its suit against BVBA in court, the giant has been dealt a blow before the EUIPO’s Second Board of Appeal, which recently held that the specific 3-stripe trademark is invalid, as it amounts to mere decoration and lacks “secondary meaning” or “acquired distinctiveness” (aka: the public has not come to associate the mark on its own with a particular producer of the goods). As a result, the registration will be removed from the EU trademark Register with retroactive effect.
According to BVBA’s original filing, adidas’ 3-stripe mark – one that consists of three vertical white lines against a black background and applies to "clothing; footwear; headgear" – lacks the distinctiveness and source-identifying character required for trademark protection.
The matter made its rounds through the EUIPO with the Cancellation Division holding that the mark did not bear sufficient source-identifying properties. According to the Cancellation Division, there is "no reason to believe that consumers would assume that three straight black vertical lines in ordinary font is primarily intended to denote a connection with a specific provider of clothing, footwear and headgear products.”
The Cancellation Division’s decision went on to note: "The number of available simple signs utilizing straight vertical or horizontal lines is extremely limited … and there is an obvious danger that their availability for the purpose of indicating commercial origin would be unduly restricted if vertical or horizontal straight lines were treated as inherently distinctive." It ultimately that the mark is not valid, as that there is "no basis on which to conclude that the contested mark is recognized as [adidas’] trademark in the internal market of 500 million people.”
Adidas appealed and as of this month, the Second Board of Appeal has confirmed the Cancellation Division’s decision. Despite survey evidence submitted by adidas allegedly supporting the argument that consumers associate the 3-stripe mark with its brand, the Board of Appeal held that such evidence of “uncertain value,” and it was unclear how intensive, geographically widespread and long-standing the use of the mark has been.
As a result, the Board of Appeal upheld the Cancellation Division’s decision, holding that adidas’ trademark is, in fact, invalid.
According to Christian Tenkhoff, a member of the Trademarks & Designs Practice at Leicester-based IP firm, Marques, the decision creates a high bar “for the quality of evidence that is expected of a trademark owner or applicant who wishes to rely on acquired distinctiveness. It is debatable whether the Office's strict view may have been partly guided by the desired outcome, namely to keep certain design elements in the fashion industry free to be used by competitors.”
Tenkhoff further notes the “striking” nature of “the EUIPO's comment that the three-striped design might be perceived as a trade mark if it ‘contained something in addition to the three lines … that would draw attention to the lines’ (e.g., the stripes could be ‘placed inside a geometrical figure such as a square … or set into a differently colored background’).”
Nonetheless, Tenkoff predicts that regardless of the ruling, adidas’ “three stripes will continue to keep trademark practitioners on their toes for some time to come.”
* The case is Case R 1515/2016-2.