Trainers bearing four parallel stripes held to infringe adidas’ three-stripe mark

In a judgment dated April 11 2012, the Commercial Court Number 1 of Valencia has held, once again, that the use of several parallel stripes on sports clothing and trainers infringed adidas’ three-stripe marks.

In recent years adidas has requested and obtained from the Spanish courts several judgments declaring that the manufacture, import and sale of trainers and sports clothing bearing two or four parallel stripes infringed its well-known trademarks (see the judgment of the Commercial Court Number 3 of Madrid dated December 29 2006, confirmed by the Madrid Court of Appeal on September 26 2008, concerning the use of four parallel stripes on trainers; judgment of the Commercial Court Number 1 of Zaragoza dated July 31 2009, confirmed by the Zaragoza Court of Appeal on November 27 2009, concerning the use of two and four parallel stripes on trainers; judgment of the Commercial Court Number 3 of Valencia dated July 29 2011, concerning the sale of sports clothing bearing two or four parallel stripes, confirmed by the Valencia Court of Appeal on June 21 2012).

In its recent judgment (which is final), the Commercial Court Number 1 of Valencia declared once again that the use of four parallel stripes on trainers infringed adidas’ three-stripe marks, but also held that the importer of the trainers was guilty of acts of unfair competition.

In particular, the court established that the import by Mr Pietro di Nocera of 28,996 pairs of shoes bearing four parallel stripes infringed the well-known three-stripe marks owned by adidas AG and adidas International Marketing BV, and also constituted an act of unfair competition against adidas’ Spanish distributor, adidas España SA. The defendant’s actions thus infringed Articles 6 and 12.2 of the Unfair Competition Act; in addition to using four parallel stripes on trainers, the defendant had also imitated various adidas models that adidas España SA commercialised on the Spanish market.

Based on these facts, the judgment confirmed that:

• adidas’ three-stripe marks are well known;
• the appearance of the goods was similar; and
• the distribution channels were the same.

It concluded that Article 34.2 of the Trademarks Act - which allows the owner of a registered trademark to prohibit the use of similar signs if there is a risk of confusion among the public - was applicable.

Having found that trademark infringement had occurred, the court ordered that the defendant compensate the trademark owners, adidas AG and adidas International Marketing BV, for the damage caused. In order to assess the amount of compensation, the court considered the amount that the trademark owners would have received as remuneration if they had granted a licence for the sale of trainers bearing their trademarks (Article 43.2(b) of the Trademarks Act).

The court considered that the amount of €855,568.56 calculated by an expert was appropriate, pointing out that, otherwise, adidas would have been faced with a probatio diabolica situation (legal requirement to achieve an impossible proof).

The court also declared that the import of the infringing products constituted an act of unfair competition because it negatively affected the position of adidas España SA as distributor of adidas trainers in Spain.

The court justified the cumulative sentence by invoking the principle of ‘relative complementarity’ between the unfair competition legislation and the trademark law, taking into account that adidas España SA could not benefit from trademark protection, as it was not the owner of any of the infringed three-stripe marks, but was still affected by the defendant’s conduct.

Eduardo Vila, Grau & Angulo, Barcelona