Is this really the end of the three-stripe trade mark ?

Originally published by Clément Monnet.

In its decision dated 19 June 2019 (Case T-307/17), the General Court of the European Union has confirmed the invalidity of Adidas’ European Union trade mark, which consists of three parallel equidistant parallel stripes of identical width applied on a product in any direction.

Adidas, a world-renowned German company specializing in the manufacture and marketing of sporting goods, had in 2014 obtained the registration of a European Union figurative mark consisting of “three parallel equidistant stripes of identical width, applied on the product in any direction” to designate “clothing, footwear, headgear” in class 25:

In 2016, in response to a legal battle that had lasted for many years with the German giant, Shoe Branding Europe BVBA, a Belgian company that wished to be able to affix two parallel stripes on the outside of its shoes, filed an application for a declaration of invalidity against the “three-stripe trade mark”.

By decisions of 30 June 2016 and 7 March 2017, the Cancellation Division and then the Second Board of Appeal of the EUIPO granted the Belgian company’s application for declaration of invalidity on the ground that the mark in question was devoid of any distinctive character, both inherent and acquired through use.

Adidas challenged the last decision of the Board of Appeal, limiting its argument to the acquisition of the distinctive character through use of its “three-stripe trade mark”.

In its ruling of 19 June 2019, the General Court dismissed Adidas’ action, confirming that the applicant had not validly demonstrated the acquisition of distinctive character through use of its “three-stripe” sign. First, it considered that, contrary to Adidas’s claims, the relevant sign constituted a figurative mark and not a design mark which may be reproduced in different dimensions and proportions depending on the goods on which it is applied. On that point, the General Court noted that it is not apparent either from the graphic representation of the mark at issue or from the description of that mark that it is composed of a series of elements which would be repeated regularly, as is commonly the case for pattern marks. Next, the Court pointed out that in the case of an “extremely simple” trade mark (qualification not contested by the applicant), even a slight difference could lead to a significant alteration to the characteristics of the mark as registered and that, therefore, an exploitation of the modified sign cannot be considered equivalent to an exploitation of the registered sign.

On the same point, from the assessment of the use of the “three-stripe mark”, the General Court dismissed (as the Board of Appeal had done) the evidence in which the colour scheme was reversed, namely those showing white (or light) stripes against a black (or dark) background. It considered that the signs appearing in the vast majority of the documents produced by the German company differed significantly from the registered form of the contested mark.

Finally, the General Court further validated the assessment of the Board of Appeal, which considered that the documents produced by Adidas did not make it possible to establish the acquisition of distinctive character through use throughout the territory of the EU, since the applicant had submitted relevant information for only five Member States.

What can we really learn from the ruling of the General Court?

• When filing a trademark, the character of “pattern mark” of the sign at issue must not be ambiguous. The EUIPO consistently recalled that the characteristics of a sign that are not indicated in the application for registration or in the accompanying documents cannot be taken into account. The position of the General Court on this point is therefore classic;
• The application of the “law of permissible variants”, which consists in considering – in this case – that the reversal of colours constitutes a substantial change, may seem severe when it is known that, in practice, it is recommended that applicants file their sign in black and white in order to benefit from a broader protection. Will this ruling call this strategy into question? Moreover, if Adidas had filed the sign with the inverted colours…would the General Court’s analysis have been the same? The debate remains open;
• This ruling confirms – again – that the work of collecting evidence of use of EU trade marks must be meticulous. Owners cannot simply demonstrate that their trademarks have acquired distinctiveness in a substantial part of the territory of the European Union.Thus, despite many comments that have been made that the General Court has refused to grant protection to the “three-stripe mark”, it seems to us – perhaps – more reasonable to point out that if Adidas had been more careful in demonstrating the acquisition of distinctiveness through the use of its three-stripe sign, the General Court’s assessment might have been quite different. In the event of an appeal to the Court of Justice, the study of the new documents submitted by Adidas should be interesting.
• In any case, even if we were to leave it at that in this case, it would not mean that any company could reproduce three (even two?) parallel stripes on the outside of a shoe or on the sleeves of a sports item. Indeed, the strong notoriety of Adidas and its products as well as its extensive portfolio of worldwide intellectual property rights (trademarks, designs and models) will continue to be effective weapons in the future. We are therefore still far from the end of the “three-stripe mark” under trademark law.

In practice, we can be surprised by the quality of the documents produced by Adidas. Surveys are effective weapons to establish not only notoriety but also distinctiveness… provided the questions are well asked! However, this does not appear to have been the case here. Indeed, the General Court notes that before answering the question concerning the distinctiveness of the contested sign, the responding party had been conditioned to respond in the manner sought by Adidas by being questioned beforehand on whether they had already found themselves in the presence of the said sign… in relation to sports clothing or sports equipment. Indeed, the idea behind the question could seem a little too obvious.

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