Adidas loses before the General Court of the European Union the case regarding the exclusivity of ‘three stripes’. Practical aspects of the judgment of 19 June 2019.

Last week, the public (and not only the legal one) was electrified by the EU Court ruling on the Adidas trademark, which depicts three stripes characteristic of the brand. As a result of this ruling (judgment of the Court of First Instance of 19 June 2019, Case T-307/17), the decision of the European Union Office for Intellectual Property (EUIPO) annulling the granted right of protection for this symbol was upheld. Consequently, some of the authors of the media messages could not be more surprised how the Court of First Instance challenged the exclusivity of such a characteristic and recognisable graphic sign as the famous ‘three stripes’ by Adidas.

However, the case is not as obvious as it was presented in the journalistic broadcast. Moreover, the judgment itself contains valuable guidelines for entities seeking protection in similar, simple signs in the future. Let us, however, start from the beginning.

‘Three stripes’ – being what?

The first step is to dispel any growing speculation. Let us therefore clarify which sign was the subject of the proceedings – first before the EUIPO Board of Appeal and then before the General Court. It was not the famous Adidas logotype, which is still protected without any harm, but the following sign shown in the picture, declared for goods: ‘clothing, footwear, headgear’.

The same mark has been described by the applicant himself as: ‘(…) consisting of three parallel stripes at equal distance from each other, of the same width, superimposed on a product in any direction’.

In the opinion of the two EUIPO instances, which issued the cancellation decisions, the mark is devoid of both primary and secondary distinctiveness. To put it simply, Adidas did not prove that the sign presented in this version is used on the European Union market.

Moreover, which is not without significance for further reflection, the Office, in view of the simple representation of the mark and its laconic description, defined the figurative sign shown above in its original decision in order to make it legible. He considered that ‘it consists of three vertical, parallel, thin and black stripes on a white background, approximately five times as high as the width of the stripes. It has relatively few features: the height/width ratio (about 5:1), the white parallel distance between the black stripes and the fact that the stripes are parallel. It has undoubtedly narrowed down the general definition previously given by Adidas’ proxies.

‘The law of the permitted variants’

Going forward, we would like to remind you that, in principle, the granted right of protection protects a trade mark with the representation as applied for in the application. The so-called concept of the ‘right of permitted variants’ may come in handy. It is limited to the fact that the use of a trade mark that differs slightly in elements from the registered one is the use of the trade mark in its registered form.

In order to convince the Office and the Court of First Instance of its case, Adidas submitted a numerous pieces of evidence. According to the grounds of the judgment, the applicant’s argumentation contained 12,000 pages (sic!) showing that he used three stripes precisely to the extent that the above mentioned concept allowed him to do so.

However, it is impossible not to notice that the photographs presented do not in fact represent the mark which was the subject of the registration. This was also noted by the Court, which pointed out that with such simple signs (straight black and white lines) any modification may result in significant changes so that the modified form cannot be considered equivalent to the previously registered one.

Possible formal errors by Adidas

Moreover, Adidas seems to have committed several formal errors at the stage of the proceedings, which were carefully pointed out by the Court of First Instance. The first defect appears to be the fact that, in support of its arguments, Adidas also included a number of products in respect of which the mark had not been registered. As the Court rightly observed, since the registration took place in respect of products described as ‘clothing, footwear and headgear’, the applicant could not use the catalogues of bags or rucksacks presented.

Subsequently, Adidas presented a series of market studies showing the recognition of its signs by respondents in several Member States. However, they were challenged by the Court on the ground that they concerned different graphic and structural indications from those for which registration was sought. In addition, the questionnaires were suggestive and could have given rise to concrete answers.

Conclusion

In this article I have presented only a fragment of an interesting and convincing argumentation made by the Court. It is of great practical value, in particular as regards the possibility and manner of registering the signs being only a certain model or element of a brand, and not a specific logotype. It should be remembered that although it is possible, such registration is burdened with risks and numerous restrictions, in particular concerning the need to concretise the mark already at the initial stage of registration. Therefore, the failure of Adidas has not only a legal but also a marketing dimension.