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Adidas loses battle over three-stripe trademark

26 June 2019
Intellectual property rights

For years Adidas has been involved in many procedures concerning the validity and infringement of the well-known three-stripe trademark. For example, Adidas has been conducting proceedings against H&M for years about the use of two stripes on the sleeves of a cardigan. Last week, a new chapter was added to this so-called war against stripes. The General Court of the European Union has invalidated one of the many variations on the registered three-stripe trademark of Adidas (click here for the decision).

The decision of the General Court concerns a trademark registration of Adidas from 2013 for a figurative trademark in which three black stripes were placed vertically in a white area (the three-stripe trademark):

Lack of distinctive character

The Belgian company Shoe Branding Europe started an invalidity procedure in 2014 because it was of the opinion that the three-stripe trademark of Adidas lacks distinctive character. That is to say, in the opinion of Shoe Branding Europe, that the public in principle would not regard three stripes as a trademark but as, for example, a decoration on clothing. Under European trademark law, signs can only be registered as a trademark if these signs have a distinctive character. The distinctive character enables the trademark to distinguish products of one company from products of other (competing) companies. In other words, a trademark indicates the origin of a product. A sign consisting of a simple decoration will not be interpreted by the public as such an indication of origin.

Acquiring distinctive character

However, simple signs can have enhanced distinctiveness because the sign has been used extensively, for example on products and in marketing campaigns. The use then ensures that the sign, that initially is not distinctive, acquires distinctive character.

In the procedure, Adidas argued that the three-stripe trademark has acquired distinctive character: Adidas claimed to have used the three-stripe trademark so intensively and in such an ongoing manner that the public now perceives it as a trademark. The acquisition of distinctive character must be proven by the party who invokes it, in this case Adidas. Adidas was able to provide this proof by showing examples of use, such as images of products, invoices with the sale of those products and advertising campaigns.

Conclusion

At first, this did not appear to be a big problem. After all, Adidas had submitted no less than 12,000 pages of evidence. However, the General Court had a different opinion.

The General Court firstly found that the three-stripe trademark is an “extremely simple” trademark. As a result, all kinds of variations on the registered three-stripe trademark cannot serve as proof.

Adidas had for example submitted images which indeed had three lines, but the colours of the use did not correspond to the three-line trademark consisting of three black lines against a white background. This proof was therefore inadmissible. Furthermore, Adidas had not indicated which images of the total of 12,000 pages served as evidence, and why these images were relevant. And although the figures on turnover and advertising expenditure are “impressive”, the General Court finds, Adidas has failed to indicate which part of these figures refers precisely to the three-stripe trademark. As a result, the General Court cannot determine whether and to what extent the three-stripe trademark was used by Adidas.

The General Court concludes that Adidas has not (sufficiently) demonstrated that in recent years it has used the three-stripe trademark in such a way that it has acquired distinctive character. This judgment does not mean the “end” of the three-stripe trademark. After all, Adidas has many other trademark registrations for the three-stripe sign. For example, Adidas has valid trademarks for the three stripes that are applied at specific places, such as on the side of a shoe or the sleeve of a cardigan.

This decision underlines the importance of proof of use: it cannot be a sinecure to prove at a later stage that the trademark has already been used. In addition, it is always important to properly substantiate the procedural relevance for each filed document. Simply submitting a huge amount of evidence seems impressive, but it doesn’t always help you further.

Are you curious about dealing with the strict rules of proving trademark use? Ploum has a combined practice of attorneys at law  and trademark attorneys with lots of experience and is happy to assist you.

More information

Arnoud Martens

T +31 6 3015 1903
E a.martens@ploum.nl

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