The Black (not White) Stripes

This case is another instalment in the battle of adidas to protect its three-stripe logo as broadly as possible under trademark law. In 2014 adidas succeeded in registering a trademark consisting of “three parallel equidistant stripes of identical width, applied on the product in any direction” for clothing, footwear, headgear:

Shortly afterwards Shoe Branding Europe (which has been in litigation against adidas before) filed an invalidity action. The EUIPO declared the registration of adidas invalid because it lacked both inherent and acquired distinctive character. Adidas appealed to the General Court claiming in essence that its trademark had acquired distinctiveness through use.

The key issues in this decision evolve around the “interpretation” of the mark, use of a mark that differs from its registered form and proving acquired distinctiveness “throughout” the EU. On all three issues the Court ruled against adidas.

Strike one: the Court took a “what you see is what you get” approach and ruled that the adidas mark is not a “pattern” that can be reproduced in different proportions and cut at slanted angles, but an ordinary figurative trademark consisting of three vertical, parallel, thin black stripes cut at a right angle against a white background.

Strike two: the Court held that the three-stripe trademark is extremely simple and that minor changes to the mark may constitute significant changes, which in turn can alter the distinctive character of the mark. For the Court the inversion of the colour scheme (three white stripes against a black background) is a significant change compared to the trademark in its registered form. This meant that images, figures relating to turnover and marketing expenses and market surveys including use of the three-stripe mark with inverted colour scheme or with sloping stripes, could not be taken into account.

Strike three: the Court held that the relevant evidence was too limited to show acquired distinctiveness throughout the EU. From the 23 market surveys conducted by adidas only 5 were considered relevant because they related to the use of the three black stripes. Although these surveys were conducted in big Member States (Germany, France and Spain) and different markets (Estonia and Romania) they covered only a part of the EU. Extrapolation of the evidence to the other Member States was rejected because adidas failed to demonstrate that the remaining national markets were comparable to the surveyed markets.

Despite the three strikes adidas is not “out”. It can appeal to the Court of Justice and may still rely on its other three-stripe trademarks registered in various forms and colour schemes for trademark protection.

This ruling makes it clear that it is important how a trademark is filed and that using it in a different form than registered can have significant consequences. As to proving acquired distinctiveness throughout the EU: the Court did not demand evidence for each Member State separately but confirmed that national markets can be grouped because of e.g. geographic, cultural and linguistic proximity. However, it remains important to show (not tell) the European Instances why certain markets are comparable to justify extrapolation of evidence to cover the whole of the EU and not only a substantial part thereof.