The European Court of Justice has delivered its verdict in the long-running case over the trademarks of adidas three parallel stripes on footwear. The ECJ ruled in favour of adidas, upholding the earlier decisions of the EUIPO, that two trade marks filed by Belgian footwear company Shoe Branding Europe infringed on adidas’ globally-renowned ‘three stripes’ mark.
Confusion over marks
The case was triggered when, in 2009 and 2011, Belgian company Shoe Branding Europe filed an application with the European Union Intellectual Property Office for registration of two EU trade marks, one for footwear and the other for safety footwear. This was opposed by retail giant Adidas on the grounds that those trade marks relied, inter alia, on one of its own marks. In 2015 and 2016, the EUIPO allowed adidas’ oppositions and refused registration of the two marks applied for by Shoe Branding Europe. Given the degree of similarity between the marks at issue plus the reputation of adidas’ earlier mark, the ECJ has upheld the decision of the EUIPO and ruled that there is a likelihood that members of the public might confuse the marks. As a result, the Court has ruled the use of the marks applied for could take unfair advantage of the reputation of adidas’ mark and that such use would be unjustified by due cause.
Commenting on the verdict, Mewburn Ellis trade mark attorney Jacqueline Pang said: 'Today’s decisions by the General Court of the EU are unsurprising. The Boards of Appeal had simply adopted the General Court’s analysis in an earlier judgement between the same parties and taken it to its logical conclusion. That General Court decision had also subsequently been confirmed by the Court of Justice of the EU, the EU’s highest court. Ultimately it was the significant reputation of Adidas’s three stripes on footwear that won the day.'
She said that the decision would make it much harder for third parties to get away with adopting a mark with only minor variations to that of Adidas’s three stripes, such as adding or removing a stripe or changing its direction. 'Shoe Branding Europe partly shot itself in the foot. Its promotion campaign in 2007 in Spain and Portugal used the slogan ‘two stripes are enough’, which was felt to be a ‘concrete element’ in finding that it had taken unfair advantage of Adidas’s mark and also in proving that Shoe Branding’s use of its mark was not always in good faith. The decision also proves that although it may be initially difficult to obtain protection for non-traditional marks, they can be well worth the effort as potentially effective and powerful weapons against third parties.'
Battle won but war continues
However, she issued a warning to brands saying they should watch this space carefully. 'Adidas may have won the battle but the war continues. In an unrelated case last year, Shoe Branding successfully cancelled one of Adidas’s EU trade mark registrations for 3 stripes despite copious evidence purportedly showing use of the mark and this is under appeal at the General Court. The saga continues.'