adidas strips competitors of two-stripe designs

Germany

In two separate cases, a local civil court in Cologne has upheld adidas-Salomon AG's (adidas) requests for injunctions preventing Nike Inc and a clothing company called Tom Tailor from using two-stripe designs on their apparel.

In the first case, adidas filed a claim against competitor Nike in relation to a two-stripe design stitched along the seam of a particular type of workout pants (Case 84 O 74/04, January 20 2005). The pants prominently featured Nike's own famous brands. In the other case, adidas took issue with Tom Tailor's manufacture and sale of jackets with two parallel stripes stitched along the seams of the arms (Case 84 O 41/04, January 20 2005). In both cases adidas argued that the use of two parallel stripes was an infringement of its famous three-stripe design. Both Nike and Tom Tailor argued that they were using the parallel stripes as a decorative element and not as a trademark (ie, not as an indication as to the origin of their goods). They also pointed out that they had used their own brands on the respective articles of clothing, and that consumers would therefore use these brands to determine the source of the goods.

The court in Cologne upheld adidas's claims. It noted the fame of adidas's three-stripe design and came to the conclusion that, in each case, the two-stripe design was an infringement of that famous mark. The court reasoned that although Nike's and Tom Tailor's products prominently featured their own brands, this fact was of little help in view of the fame of the three-stripe design. Accordingly, it ordered Nike and Tom Tailor to stop using their designs and held that adidas was, in principle, entitled to damages.

These decisions highlight the strength of adidas's three-stripe design, particularly in Germany. The Cologne court referred to earlier decisions of the Federal Supreme Court and the Court of Appeals in Munich, which held that the use of two parallel stripes was not decorative in nature and clearly infringed adidas's famous three-stripe design. It is also worth noting that the European Court of Justice (ECJ) has also ruled in favour of adidas in relation to the third-party use of two-stripe designs on clothing products. However, in the adidas-Salomon AG v Fitnessworld Trading Ltd and Marca Mode CV v adidas AG cases the ECJ only had to decide on specific legal questions raised by the national courts. It did not decide on the facts of the cases as such.

For analysis of the Fitnessworld Case, see ECJ reaffirms its interpretation of the EU anti-dilution provision. For discussion of other cases in which adidas has successfully enforced rights in its three-stripe design, see adidas wins case against three-stripe mark infringer and Supermarket runs out of luck in sports shoe dilution case.

Carsten Albrecht, Lovells, Hamburg

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