Adidas officially earning its stripes

With the CJEU´s ruling on 17 February 2016, a lengthy saga concerning Adidas might have come to an end. After contesting everything from two to five stripes, creating and using an abundance of case law, logging a fair share of hours in the courtroom, it might have all- at least in the EU- come down to one thing: acquired distinctiveness.


Background of the case

In 2009, Shoe Branding Europe BVBA (‘Shoe Branding’) applied for a Community Trademark with OHIM. The filed trademark was a position mark, consisting of two stripes, sloping from the instep to the sole. Adidas opposed the application, protecting their famous figurative three-stripe trademark (CTM nr. 003517646). When the Opposition Division rejected the opposition, Adidas tried to appeal, also with a negative outcome.

The Board of Appeals decided to disregard the reputation of the marks due to the simplicity of the trademark. The Board was of the opinion that the trademark´s banality combined with a different number of stripes and positioning means it is unlikely that the public would be confused.

Adidas sought justice in front of the General Court (EGC), which in deed annulled the previous decision, stating the abovementioned differences are minimal and will be overlooked by the average consumer. This decision led to Shoe Branding´s revolt. The case was finally brought to the European Court of Justice (CJEU).

Decision of the CJEU

Shoe Branding started the appeal criticizing the EGC´s definition of their average consumer. According to Shoe Branding, their products are specialized sporting goods, and the consumers should be expected make a distinction between different brands of sporting goods. Therefore, a higher threshold of necessary awareness is required. The Court disagreed, noting that sporting goods are everyday products and the average consumer is only reasonably informed and observant.

Next, the EGC ruled that likelihood of the confusion must be assessed regarding the entire product, but, with a focus on the distinctive parts of the product, which the CJEU confirmed. The CJEU added that the small differences, like the number of stripes, do not influence the overall impression of the product.

Finally, the CJEU challenged Board of Appeal´s view, stating that the reputation of the mark is important and can not be disregarded.

This may be the final curtain for a long series of “stripe cases”. Only three months prior, the “five-stripe shoe” case  had reached its end. K-Swiss Inc. lost the battle against OHIM, who rejected registration of a position trademark they applied for. The trademark in question is a sport shoe with five stripes on the outer side of each shoe. The case was brought in front of the EGC. The decision was reached that there is no distinctiveness in putting five stripes on a shoe and it is not an indication of a commercial origin. The interesting part of the ruling is where the Court says: ” …to accept that every geometric shape, even the most simple, has distinctive character because it features on the side of a sports shoe would make it possible for some manufacturers to appropriate simple, and above all decorative, shapes, which must remain accessible to everyone, with the exception of those situations in which the distinctive character of the sign has been acquired by use.”

This statement, combined with the “Shoe Branding” decision, might be the final recognition of Adidas´rights, and a proof that three really is a charm.