Are three stripes too basic for a trademark? As for Adidas, the General Court of the European Union is saying it is.
As reported by Wall Street Journal on June 19th, 2019 by Sara Germano.
Adidas AG ADDYY 1.12% thinks so, but Europe’s second highest court ruled on Wednesday that the German sportswear giant’s iconic branding didn’t qualify, saying Adidas hadn’t offered sufficient evidence to claim the parallel stripes were a mark of “distinctive character” worthy of protection.
In the annals of branding, the three stripes rank among the most recognizable product markings, from the sportswear maker’s bold track suits with three-stripe piping to its white shell-toe sneakers with stripes down the sides.
The ruling by the General Court of the European Union, which is open to appeal for the next two months, could make it more difficult for Adidas to go after rivals using the three-stripe motif, according to a person familiar with the court.
The court found that the three stripes in question were essentially too basic a pattern to be deemed a trademark. “Given the extreme simplicity of the mark at issue,” the ruling said, “even a slight variation could produce a significant alteration to the characteristics of the mark as registered.”
Much of the ruling grapples with evidence provided by Adidas in an earlier stage of the case, including images showing Adidas products with three-stripe markings, as well as market surveys from around Europe to indicate consumers’ awareness of the Adidas stripes. The court found that such evidence wasn’t relevant to the specific application of the trademark in question.
Claudia Lange, a spokeswoman for Adidas, said the company had many registrations of protection for its three-stripe mark, but declined to quantify how many such trademarks it possessed. She emphasized that the European court’s ruling didn’t affect the brand’s ability to use three stripes on Adidas gear, nor did it affect the company’s ability to enforce its existing trademarks. Ms. Lange didn’t immediately address whether Adidas was planning to appeal.
The court’s decision came in response to a challenge by Adidas against the 2016 annulment of the three-stripe trademark by the European Union Intellectual Property Office, which was itself sought by Belgian company Shoe Branding Europe BVBA. In its ruling Wednesday, the General Court upheld the annulment.
Intellectual property disputes are especially common in the sportswear industry, and Adidas has fought vigorously to defend its three-stripe logo in other cases against U.S. rival Skechers USA Inc. as recently as last year.
The General Court case follows other high-profile trademark disputes in fashion, including a 2012 victory by French luxury shoe maker Christian Louboutin SA to exclusively use the color red on the soles of non-red shoes.
Legal experts said Wednesday’s ruling in the Adidas case wasn’t surprising upon review of similar disputes in the European Union.
“We are seeing the EU IP Office focus much more on ensuring that trademarks are not improperly registered, and the public can easily understand their scope,” said Shireen Peermohamed, partner on the intellectual property team of London-based law firm Harbottle & Lewis.
“If a brand owner cannot demonstrate use of a trademark throughout the EU, then their trademark could be canceled down the line, or, as here, never registered in the first place,” Ms. Peermohamed added.
What should Adidas do in this case? Should they keep fighting for their trademark or let other companies take advantage of their design?
For more information on trademarks, check out our Trademarks 101 blog!