The Court of Justice of the European Union (CJEU) has ruled on the case of alleged similarity regarding the well-known Adidas three-stripe trade mark (see first image below). Shoe Branding Europe BVBA applied for a Community Trade Mark (CTM) (see second image below) for two parallel stripes, both impressed on a shoe, and which appeared to be similar to the Adidas “Dragon” model. Adidas had a number of prior rights to a three-stripe mark protected in class 25 (i.e. for footwear) for which the Shoe Branding CTM also sought protection.
The opposition by Adidas to the Shoe Branding application was dismissed by the Office for Harmonisation in the Internal Market’s (OHIM) Opposition Division and by the Board of Appeal. It held that the Adidas three-stripe mark was so banal that it could enjoy protection only against identical, or virtually identical, reproductions. In particular, the Board held that the differences in the details in the positioning, sloping and the number of stripes were sufficient to dispel any likelihood of confusion. The Board of Appeal also found that these dissimilarities were sufficient to dispel a risk of a link being made between the marks and therefore the application could not take unfair advantage or be otherwise detrimental to the distinctive character of Adidas’ three-stripe mark.
Adidas subsequently appealed this decision to the General Court where the decisions of the Opposition Division and Board of Appeal were overruled on the grounds that the difference in length of the stripes arising from their difference in inclination were minor and would not be noticed by a consumer with an average degree of attention. Shoe Branding appealed this decision to the CJEU where the General Court’s reasoning was upheld. The CJEU found that the “minor differences” between the shoes such as the length of the stripes, their different inclination and their number were not enough to say that the marks were dissimilar. As such, the CTM application was struck down on the basis that it would cause a likelihood of confusion amongst consumers.
The case highlights to brand owners that non-traditional trade marks can be an effective branding tool which can be used to keep copy cats and other infringers at bay.
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Contributed by Brian McElligott.
