adidas fails to substantiate earlier right in three-stripe mark

European Union
In adidas AG v Office for Harmonisation in the Internal Market (OHIM) (Case T-479/08, September 29 2011), the General Court has upheld a decision of the Second Board of Appeal of OHIM in which the latter had found that the extract from the online register of the German Patent and Trademark Office (PTO) relied on by adidas AG in support of its earlier mark did not enable it to ascertain the existence, validity and scope of that mark.

On August 12 2002 Patrick Holding ApS filed an application for the registration of the following figurative Community trademark: 

adidas opposed based on the following earlier right (German trademark registration 39 950 559), for which it submitted an extract from the online register of the German PTO:

adidas alleged that there was a likelihood of confusion within the meaning of Article 8(1)(b) of the Community Trademark Regulation (207/2009).
On March 30 2007 the Opposition Division of OHIM refused the application on the basis of the earlier German trademark. Patrick appealed. On August 27 2008 the Second Board of Appeal of OHIM, finding procedural irregularities in the substantiation of the earlier right, in breach of Articles 16(3), 17(2) and 20(2) of the Community Trademark Implementation Regulation (2868/95), annulled the previous decision and remitted the case to the Opposition Division.
adidas appealed, requesting that the General Court annul the board's decision. The General Court rejected adidas' arguments and confirmed the decision of the board.
In particular, the court agreed with the board that adidas had not provided a comprehensive translation into English of the extract from the German PTO register. adidas had translated only the headings, but the entries relating to each of the headings were not themselves translated. In the opinion of the board, this deficiency did not enable it to ascertain the existence, scope and validity of the earlier mark, which was necessary to assess whether confusion might occur.
As far as the scope of the earlier mark was concerned, the court held that:

"it must be noted that [adidas] has failed to adduce evidence which substantiated its claim that the indication of the type of mark has no legal force under German law because the nature and the scope of the protection of a mark depend on that mark’s graphic representation”.
On the contrary, “the indication of the type of the earlier mark is essential in order to assess the scope of the protection of the earlier mark on which opposition proceedings... are based".
Therefore, the board did not have sufficient elements to assess whether the earlier mark was a figurative or a three-dimensional mark:

Where the earlier mark consists of the shape of the product itself, it will be necessary to take into consideration the shape of the product as a whole in order to assess the mark’s distinctiveness. On the other hand, where the earlier right is a figurative mark, even if the overall impression has to be taken into account, any graphic elements present are likely to assume a greater or lesser importance in the assessment of the distinctiveness of that mark… It follows that, if the earlier mark is a three-dimensional mark, it may be found to be less distinctive.”
With regard to the entry “Legal/Procedural Status” in the German PTO register extract, the board had found that this expression related to the legal validity of the earlier mark and to whether there were procedures pending which might affect that validity. Contrary to adidas' contention, the indicators of the legal status and of the existence of opposition proceedings brought against the earlier mark were essential components in opposition proceedings before OHIM. The same could be said in connection with the potential renewal of the earlier mark.
The General Court concluded as follows:
"In the light of the foregoing, and even if, as [adidas] submits, the Board of Appeal erred in criticising [its] failure to submit the description of its earlier mark No 39 950 559, the fact remains that, in the absence of indications of the type and legal and procedural status of that mark – which are essential – the Board of Appeal was correct to find... that it was impossible to ascertain the legal status, the nature and the actual scope of the protection of that mark’s registration."
Vincenzo Melilli, Bugnion SpA, Milan

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