Image: adidas

Adidas cannot prevent others from registering 2-stripe trademarks, at least not in Japan. In a recent proceeding before the Japan Patent Office (“JPO”), the national intellectual property body shot down adidas’ attempt to invalidate Marubeni Footwear’s registration for a diagonal 2-stripe trademark. In an April 2018 filing, adidas sought to have the JPO cancel Marubeni’s registration, arguing that the Tokyo-based footwear brand obtained the mark in furtherance of “a malicious intention to take advantage of the reputation of [adidas’] famous trademark and impair the goodwill embodied in its iconic three stripes.”

According to the German sportswear giant’s cancellation filing, as first reported by Japanese attorney Masaki Mikami, the “appearance” of Marubeni’s 2-stripe trademark “gives rise to [the] same impression [as] adidas’ 3-stripe trademarks, since each stripe in [Marubeni’s] mark is depicted in the same direction, width and shape” as its mark. Adidas also asserted that just like its 3-stripe trademarks, the “space between [the] stripes [in Marubeni’s mark] is of the same width as the stripes,” making the two brands’ marks nearly identical.

As for the one stripe difference between the two companies’ trademarks, adidas argued no matter: since its famed 3-stripe mark, which it has used since the early 1950s, “has been substantially used in various colors, length, and configurations,” the average consumer is “likely to associate [Marubeni’s 2-stripe] mark with its 3-stripes.”

This seemingly inconsequential nature of the 2-stripe versus 3-stripe distinction is bolstered by adidas’ argument that when Marubeni uses stripes of one color and there is “a space between the stripes [that] is another color, and thus opposed mark looks like depicting three stripes on shoes, it is highly anticipated that relevant consumers would confuse [the shoe’s] source with [adidas].”

 adidas’ 3-stripe mark (left) & Marubeni’s 2-stripe mark (right) adidas’ 3-stripe mark (left) & Marubeni’s 2-stripe mark (right)

Siding with Marubeni on August 30, the JPO’s Opposition Board determined that while there is a “high degree of reputation and popularity” associated with adidas’ 3-stripe trademarks in connection with footwear and sportswear, an average consumer is not likely to mistake two stripes for three stripes in purchasing shoes.

In terms of adidas’ argument that the use of two stripes with a contrasting space may appear to be three separate stripes, the JPO’s Board was unpersuaded, deciding that the Marubeni’s mark does, in fact, only consist of two stripes and the space in-between is not relevant.

With the foregoing in mind, the Opposition Board dismissed adidas’ invalidation proceedings and held that Marubeni’s registration shall remain valid.

Th proceeding before the JPO comes just a few months after adidas was handed a stripes-specific loss in the European Union. In June, the European Union General Court upheld the European Intellectual Property Office Second Board of Appeal’s decision that the German sportswear giant’s mark – which consists of “3 parallel equidistant stripes of identical width applied on the product in any direction” – lacks the necessary distinctiveness to be protected as a trademark, a blow in adidas’ global quest to secure and enforce rights in the famous 3-stripe design.

In addition to primarily asserting that adidas’ 3-stripe mark is not a pattern mark, as adidas has asserted, but instead, an ordinary figurative mark, meaning that it has fixed proportions, the General Court held that the sportswear brand failed to show that its largely well-known mark had acquired the necessary “distinctive character” throughout all 28 countries of the EU in order to qualify for legal protection.