The adidas three-stripe mark has continued to buck the trend of unfavourable EU Court decisions involving stripes and other patterns (including the K-Swiss 5-stripe logo, the Vans single waved line logo, and the Louis Vuitton chequerboard pattern).
In the latest instalment of its long running dispute with the Belgian company Shoe Branding Europe (dating back to 2009), the General Court has upheld adidas's opposition against Shoe Branding's EUTM application for the two-stripe position mark (above left), for footwear in class 25. This was based on adidas's earlier registrations for its three-stripe mark, including the EUTM position mark (above right). The decision also comes at a time of good news for the Christian Louboutin red sole position mark – see our separate report here.
Unlike other cases involving some of the other famous stripe/pattern marks mentioned above, the inherent distinctiveness and validity of adidas's mark were not in the dock in these proceedings, since it was accepted by the parties that adidas's mark had established a high reputation. The issue before the General Court in this particular decision was whether Shoe Branding's EUTM application should be rejected on the grounds that its use would take unfair advantage of that reputation, without due cause (under article 8(5) of the EUTM Regulation).
The General Court affirmed that, given the degree of similarity between the parties' two- and three-stripe marks, the identity between the goods, and the high reputation of adidas’ mark, there was a likelihood that the relevant public would establish a link between the marks and that the use of Shoe Branding's mark could take unfair advantage of the reputation of adidas’ mark. However, Shoe Branding in particular claimed its use was with "due cause" (and therefore exempted under article 8(5)), on the basis that the parties' marks had co-existed for a number of decades, with adidas's acquiescence.
The Court set out the following criteria for establishing due cause:
The Court found that Shoe Branding had not made (or even claimed) use of the mark applied for throughout the EU, being the relevant territory for adidas's earlier EUTM. Further, the parties had not enjoyed a peaceful coexistence. Shoe Branding's use of the slogan "Two Stripes are Enough'" was also held to show a clear attempt to take advantage of the repute of the adidas mark. The Court accordingly found Shoe Branding had not acted with due cause, and upheld adidas's opposition.
Case Ref: GC T-85/16 and T-629/16