IP Cases & Articles

Position marks: adidas keeps its stripes

This decision from the General Court relates to protection of position marks and raises interesting points on reputation, due cause and unfair advantage.

Background

The applicant sought to register two identical EU position trade marks, shown below:

adidas-1.jpg#asset:4494

The trade marks were described as follows “The trade mark is a position mark. The mark consists of two parallel lines, positioned on the outside surface of the upper part of the shoe. The parallel lines run from the sole edge of a shoe and slopes backwards to the middle of the instep of a shoe. The dotted line marks the position of the trade mark and does not form part of the mark”.

One trade mark covered “safety footwear for the protection of accidents or injuries” in class 9 and the other “footwear” in class 25.

The trade marks were opposed by adidas, based on their own earlier EU position trade marks shown below:

adidas-2.jpg#asset:4495

The adidas trade mark contains the following description: “The mark consists of three parallel equally-spaced stripes applied to footwear, the stripes positioned on the footwear upper in the area between the laces and the sole”.

General Court decision

The main points of interest in the General Court decision focus on:

Reputation

The evidence of use provided by adidas included; turnover figures, surveys on market share, together with confirmation of their reputation from national court decisions. Most notably, their German market share is over 25%. In Spain, recognition of the mark is over 60%, rising to 80% for people between 15 to 34 years. In Sweden, immediate association is over 70%. Adidas’ sponsorship deals included high profile sporting events, such as the 1998 World Cup (in France), the 2000 European Championship (in Belgium and the Netherlands), the 2002 World Cup (in South Korea and Japan). Football team sponsorship included FC Bayern and Real Madrid. The General Court confirmed that this evidence supported the position that Adidas enjoyed a reputation in their position trade mark.

Unfair advantage

Evidence was provided by adidas showing that the applicant had alluded to their trade mark in an advert.

The slogan that was used was “two stripes are enough” and had been used in Spain and Portugal (albeit by a predecessor in title). The court found that the slogan sought to call to mind the earlier mark, known to the consumer by its reputation and suggested that the goods sold under the 2-striped mark had qualities equal to those sold by adidas under their 3-striped mark. The court found that the promotional campaign must be regarded as an attempt to exploit the reputation of the earlier trade mark. Such behaviour, identified in the course of actual use of the marks similar to the mark applied for, constituted a particularly relevant concrete element to the purposes of establishing the existence of a risk of unfair advantage being taken of the repute of the earlier trade mark.

Due cause

The applicant argued that its trade mark had been used over a long period of time and the trade marks co-existed.

The court found that the alleged co-existence was not peaceful because adidas had filed a number of oppositions to their trade marks in a number of member states. Also, the co-existence needs to be throughout the European Union. The applicant’s evidence of earlier use was inconsistent. However, because use was not through the whole European Union, it was not able to help them. The applicant’s appeal was dismissed in its entirety.

In short

Any reference made to a trade mark with a reputation is likely to be counted against you. Even where the third party trade mark itself is not expressly stated. In order to establish due cause by relying on co-existence, firstly, this must be peaceful and secondly, it must be throughout the whole of the European Union.

Case details at a glance

Jurisdiction: European Union
Decision Level: General Court
Parties: Shoe Branding Europe BVBA, EUIPO and adidas AG
Date: 01 March 2018
Citations: T-85/16 and T-629/16

Adidas keeps its stripes - link to full decision

T‑85/16 and T-629/16: Shoe Branding Europe BVBA, EUIPO and adidas AG read the full decision.

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