Adidas has been unsuccessful in an attempt to expand its trademark three-stripe design in the EU after a court ruled it was not “distinctive” enough. "The mark is not a pattern mark composed of a series of regularly repetitive elements, but an ordinary figurative mark," the court said. This also famously happened with McDonald’s losing its Big Mac European trademark recently after it failed to show genuine use of the mark across the EU when challenged to do so by Irish fast food chain Super Mac. Both cases show that even the biggest multinational corporations aren’t immune to the rigours of trademark law, but don’t forget that it can also happen to you and it can cost you a lot of time and money. If you want to know more about Adidas’ case and what you can do you to prevent this situation, keep reading...
In 2014 Adidas successfully registered the mark reproduced below, protected for clothing, footwear and headgear and having the following corresponding description: ‘The mark consists of three parallel equidistant stripes of identical width, applied on the product in any direction.’ [caption id="attachment_8689" align="aligncenter" width="655"] A trademark lawyer said Adidas had not proved consumers immediately associate three-striped products with the firm[/caption] A reminder that, under trademark law, marks which are devoid of distinctive character cannot be registered. Shoe Branding Europe BVBA saw an opportunity here and successfully filed an application for a declaration of invalidity of Adidas’ mark on this basis. However, even if marks are devoid of distinctive character, they can still be registered if they have acquired distinctive character through use throughout the European Union. Adidas appealed the invalidity ruling on this ground (i.e. that its mark had acquired distinctive character through use) but the EU court ultimately rejected its appeal.
Why did Adidas lose?
In reaching its decision, the court dismissed several pieces of genuine use evidence and arguments put forward by Adidas. Notably, Adidas tried to argue that the mark consists of the use of three parallel equidistant stripes, irrespective of their length or the way in which they are cut. If they had succeeded in doing this, they could have shown far more prevalent use of the mark than if they were restricted to finding evidence of the exact mark depicted above. However, the court felt their interpretation contradicted both the graphic representation of the mark (which is characterised by a ratio of around 5 to 1 between the total height and width and its rectangular shape, the three stripes composing it being cut at a right angle ) and the description of the mark which makes no mention of the stripes being ‘applied on the product in any direction’, or the length of the stripes being modifiable or capable of being slanted. This meant that images submitted by Adidas showing sloping (rather than vertical) stripes on clothing did not count as ‘use’ of this particular mark. Adidas also tried to argue that the court had misapplied the ‘law of permissible variations’. The idea behind this principle is that trademarks must be used in the exact form in which they are registered unless the variations are so minor as not to alter the distinctive character of the mark. Adidas submitted numerous examples of different forms of the mark represented above, arguing that those variations still counted as broadly equivalent because its distinctive character was not jeopardised. Again, the court disagreed and held that the other versions of the three stripes mark submitted in evidence differed significantly and therefore did not count as ‘use’ of the mark above. The court pointed out that, where a trademark is extremely simple (as in this case), even minor alterations to that mark may constitute significant changes. It also ruled that reversing the colour scheme (i.e. having white stripes on a dark background instead of black stripes on a white background) is a significant departure from the registered mark. Finally, it gave no weight to images of the mark used on bags, since bags weren’t part of the goods protected by the trademark (i.e. clothing, footwear and headgear). So, despite presenting the court with nearly 12,000 pages of evidence, Adidas still failed to show genuine use of the mark it had registered. It was not permitted to rely on examples of any old mark comprising three stripes varying in length, thickness and colour combinations and/or cut at a slanted angle, but only dark on light stripes in the proportions in which the mark was registered (or broadly equivalent).
What can we learn from this?
This case is a key reminder that what you see is what you get with a trademark.
They are interpreted extremely strictly and the burden is on the trademark applicant to ensure the mark applied for corresponds to the protection sought. As soon as you start playing around with the dimensions, colours or other features of a mark, you risk altering its distinctive character and losing the trademark. It is also incumbent on trademark holders to compile and retain evidence supporting proof of use of a mark, in the case of future challenge.
This might sensibly include images, turnover, marketing and advertising spend relating to the mark to evidence the scale and duration of its use and its impact on the public. Avoid taking cues from McDonald’s here, who tried to rely on (among other things) a Wikipedia entry, which was held to lack probative value due to the fact the content can be edited by readers. If you are not using your trademarks in the manner in which they are registered then you do so at your peril and may want to consider re-registering variations of the mark in light of this decision. We offer comprehensive trademark registration and advisory services.
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