Another success for adidas: General Court finds similarity between two and three-stripe marks

European Union

In adidas v Office for Harmonisation in the Internal Market (OHIM) (Case T-145/14, May 21 2015), the General Court has annulled a decision of the Second Board of Appeal of OHIM in which the latter had found that there was no likelihood of confusion between adidas' three-stripe marks and a position trademark consisting of two parallel stripes.

Belgian company Shoe Branding Europe BVBA filed an application for the registration of the following Community position trademark (No 8398141) for shoes:

  

adidas lodged an opposition based on various three-stripe trademarks, including Community trademark No 3517646:

 

adidas relied on the grounds referred to in Articles 8(1)(b), 8(4) and 8(5) of the Community Trademark Regulation (207/2009).

The Opposition Division of OHIM rejected the opposition and the Second Board of Appeal of OHIM dismissed the appeal. In particular, OHIM argued that, even though the relevant goods were identical and adidas' trademarks enjoyed a high reputation, there was no likelihood of confusion between the relevant trademarks as the dissimilarities outweighed the similarities. The well-informed average consumer would not make a link between the trademarks. Finally, adidas had not substantiated its ownership of a German non-registered mark.

The Seventh Chamber of the General Court annulled OHIM's decision based on the following findings:

  • Sports shoes are everyday consumer goods and thus the consumer is an average consumer with an average level of attention who perceives the mark as a whole only and does not analyse its various elements. At the same time, the distinctive and dominant components of the marks have to be taken into consideration.
  • OHIM had focused too much on the number of stripes (two versus three) and their positions on the shoes without placing enough importance on the many similarities and, in particular, on the use of stripes contrasting with the colour of the shoes. The average consumer would recognise the latter and would confuse the shoes and trademarks of both parties.
  • OHIM had erred in finding that the public was unlikely to establish a link between the marks at issue, and that Shoe Branding did not take unfair advantage of adidas' trademarks.

This decision is in line with the rulings of many European courts - it seems that there is some kind of harmonised European 'stripe' case law in favour of adidas. Companies have to be cautious when applying for 'stripe' trademarks, at least for sports shoes and clothes, and also when using such marks without trademark protection. adidas is well known for strongly defending its three stripes in court proceedings and before the relevant trademark offices.

Tanja Hogh Holub, Beiten Burkhardt Rechtsanwaltsgesellschaft mbH, Munich

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