Use of four-stripe and infringing shoe designs penalized

The Third Commercial Court of Madrid has issued an order prohibiting the sale of various training shoes which imitated several models of adidas shoes.

adidas brought proceedings against a network comprised of five companies and one individual, having detected, in the Spanish market, the sale of various products which it claimed were clear imitations of a number of its training shoes. The shoes also bore four slanted, parallel stripes in the same way that adidas applies its three-stripe trademark on its training shoes.

In a judgment dating from December 29 2006, the Third Commercial Court of Madrid declared that the sale of such products by the defendants (i) infringed adidas's three-stripe trademark, and (ii) amounted to acts of unfair competition.

The defendants alleged that:

• the appearance of their products merely followed the general market trends;
  
  
• the difference in the number of stripes (three in adidas's mark and four on the defendants' products) meant that there was no trademark infringement; and
  
  
• the use of names such as Bullion, Fans and Flair on the defendants' products eliminated all risk of confusion.

The defendants also tried to invoke a right to use four stripes on their products by alleging two later trademark registrations, which included different graphic applications of four stripes for footwear.

In dismissing the defendants' arguments relating to the later trademark registrations, the court first stated that none of the invoked trademarks gave the defendants any legal grounds to justify their activity. The court noted that one of the trademarks invoked by the defendants was incompatible with adidas's prior registered mark and, moreover, it had been applied for in bad faith. As such, the court declared the trademark null and void. The court did not consider the other trademark invoked by the defendants as it had been rejected in a parallel procedure because it was deemed incompatible with three-stripe trademarks previously registered by adidas. When analyzing both adidas's action seeking the cancellation of one of the defendants' marks as well as its infringement action, the court took into consideration the well-known character of adidas's three-stripe mark, which meant that it was eligible for increased protection.

Further, the court considered that the defendants' act of copying several adidas models constituted an act of unfair imitation in that such conduct went against the principle of good faith. Specifically, the court noted that the defendants' conduct went beyond the freedom to imitate provided by the law and took unfair advantage of adidas's efforts in developing its training shoes. It is important to underline that adidas did not base its claim for protection on registered or unregistered designs and that, despite this, the court considered the defendants' copying of adidas's shoe designs to be unfair.

Finally, as a result of the trademark infringement and the recognition of the existence of acts of unfair competition, the court ordered the defendants to cease selling the products bearing four stripes, and jointly and severally to compensate adidas for the damages caused. In addition, the defendants are required:

• to publish the judgment;
  
  
• to destroy the stock of infringing products; and
  
  
• on a general level, neither to infringe the trademarks owned by adidas in the future nor to sell products which constitute a copy or imitation of adidas products.

Alejandro Angulo, Grau Baylos & Angulo, Barcelona