adidas obtains registration of 'three-stripe' mark based on secondary meaning

Peru

adidas AG's battle to register its 'three-stripe' figurative and position trademark in Peru, which lasted for over 15 years, has come to an end.

adidas had applied in the past for the registration of its 'three-stripe' mark to cover goods in Class 25 of the Nice Classification, but the applications had been rejected because both the Peruvian Trademark Office (PTO) and the Administrative Court of Appeals had found that the trademark lacked distinctiveness under Article 135(b) of Decision 486, the Andean Community industrial property statute.

In 2008 adidas decided to re-apply for the 'three-stripe' trademark to be used for clothing. At first instance, the PTO rejected the application based on the same argument - namely, that the mark lacked distinctiveness.

adidas filed a plea of reconsideration, stating that the 'three-stripe' trademark had acquired a secondary meaning through widespread and constant use for goods in Class 25. adidas filed extensive evidence, consisting of:

  • trademark registrations worldwide;
  • proof of advertising;
  • amount of sales over the past years; and 
  • market surveys conducted in several Peruvian cities that showed the awareness of the 'three-stripe' trademark among consumers in the market.

Despite the evidence filed, the PTO rejected the plea of reconsideration. adidas filed an appeal before the Administrative Court of Appeals, arguing that the evidence filed should be analysed properly and that the  trademark should be registered on the ground that it had acquired a secondary meaning. adidas stated that the trademark had been in constant use on the Peruvian market since the 1970s and that it was clear that consumers recognised the trademark as belonging to adidas.

On June 3 2015, after evaluating the arguments and evidence filed by adidas, the Administrative Court of Appeals issued a resolution recognising that the 'three-stripe' mark had acquired a secondary meaning. The court applied the second paragraph of Article 135 of Decision 486, which states that a sign that lacks distinctiveness may be registered as a trademark if it has been in constant use and, as a consequence of such use, has acquired a secondary meaning. 

The court thus allowed the registration of the 'three-stripe' mark in the name of adidas.

Adriana Barrera, BARLAW - Barrera & Asociados, Lima

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