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Lessons from Adidas: how brands can protect their identities in trademark battles

How brands can protect their identities in trademark battles

This week, Adidas lost the exclusive rights to one of its three stripes logos, after its EU trademark registration was declared invalid by the European General Court.

The three-stripe branding – whether on trainers or hoodies – has, for decades, been synonymous with the sportswear company.

However, Adidas has been in a long running battle with Belgian company Shoe Branding Europe concerning the validity of its three stripes trademark. After Shoe Branding Europe applied to cancel the registration at the EUIPO, Adidas was unable to prove that the mark registered was sufficiently distinctive.

The decision from the General Court reminds us of is how vital it is for even the biggest global brands to plan strategically before filing trademark applications as well as the importance of using a trademark in the form that it has been registered.

Adidas sought to overcome the attack on its registration by arguing that the mark had been used in the EU to the extent that it had become distinctive as consumers immediately associated it with Adidas.

The description included in the trademark registration was as follows: “The mark consists of three parallel equidistant stripes of identical width, applied on the product in any direction”.

However, on 19 June, the General Court confirmed the invalidity of this trademark registration, upholding an earlier decision of the EU’s Intellectual Property Office Second Board of Appeal.

For a company with such globally recognised branding, how did this all go wrong?

Firstly, it is essential that a trademark application correctly sets out exactly what the applicant is seeking to protect. It’s not possible to claim a scope of protection over and above what is presented and defined in the application.

Adidas sought to argue that the mark was a ‘pattern’ mark and, as a result, capable of extending to use in various dimensions and proportions. However, the General Court upheld the Board of Appeal’s decision that the scope of protection was limited to the three-striped branding in the exact form registered.

That meant the trademark protection granted was far narrower than Adidas had originally intended. In certain circumstances it is possible for brands to rely on evidence of a trademark’s use which differs to an already-registered mark—if the differences have no impact on the distinctive character of the logo.

The brand argued that its application covered variations of its logo that didn’t alter its distinctive character, but the evidence was refused based on a number of points—including that changes in colour can significantly alter the logo’s character, and that some of the evidence showed a sign with two instead of three stripes.

What can other brands learn from Adidas’s mistakes?

All is not lost for Adidas, as it does own a number of trademark registrations for various forms of its three-stripe mark. However, this case is an example of the importance of strategic planning before filing a trademark application.

In defending the invalidity action, Adidas argued that the mark had acquired distinctiveness in the EU and submitted evidence of three stripe logos in use. But, because a significant proportion of the evidence submitted was of its logo in forms different to the mark as registered, that line of argument was rejected.

Understanding what your registration protects and ensuring that your use reflects what is protected, as well as retaining good records of this use, is very important should you later seek to enforce your registered rights—or, as in Adidas’s case, have to defend them.

Finally, the decision highlights the increasing difficulty associated with brand owners proving that their registered trademarks have been used throughout the EU.

Ultimately, the complexity of all these issues shows that brand owners need to be properly advised on proposed applications to protect their branding, and on the subsequent maintenance, enforcement and defence of registered trademark rights.

Graeme Murray is a chartered trademark attorney at Marks & Clerk.

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