Alex Hall, a specialist in intellectual property at innovative London law firm, iLaw, has said that the latest decision against Adidas shows that even recognisable brands can struggle to protect their intellectual property.
The General Court of the EU has ruled that Adidas failed to prove that one of its trade mark registrations for its three-stripe branding has acquired distinctiveness throughout the EU.
It comes after a long, protracted and complex battle with Belgian company Shoe Branding Europe, which had applied to the EU intellectual property office to annul one of Adidas’ many three stripe trade mark registrations.
The 2014 trade mark was granted to Adidas on “three parallel equidistant stripes of identical width, applied on the product in any direction” on clothing, hats and shoes. Crucially, the mark was treated by the Court as a figurative mark rather than as a surface pattern, so that it protected only the specific proportions set out in the registration.
During the hearing, Adidas as, it said, it related to signs other than the mark at issue because it did not show use of the mark in the exact proportions of the registrations. As a result, Adidas failed to provide sufficient evidence to demonstrate that consumers instantly associated this particular representation of its three equidistant parallel stripes with the German company.
Further, the Court held that Adidas had failed to provide sufficient evidence to establish that the mark had acquired distinctiveness across the EU, having submitted market surveys from only five member states.
“Commercially this probably won’t be a great loss for the Adidas brand as they hold and protect a large portfolio of trade mark and design registrations across the EU and around the world, but they are likely to feel aggrieved to have suffered this setback,” said Alex.
“This case isn’t unique and there have been a number of high-profile trade mark disputes in recent years that have affected similar large corporations as they try to protect every element of their design and brand.”
Alex said that a substantial part of most companies’ value is contained within their intellectual property portfolios and that there is often an ongoing mission within these organisations to enhance the protection of their trade marks and designs within the law.
“Adidas now has the option to appeal at the European Court of Justice against this decision and they can, of course, apply for new trade marks to supplement their already broad portfolio if they think there are parts of their brand that will suffer from the annulment of this mark,” he added.
“The case serves to highlight the importance for all brand owners in getting their registrations, and the evidence they use to defend them, right in the first place, no matter how well-known the mark might seem to be.”