Recently, the European Court of Appeal said that Adidas may oppose a 2-stripe trademark issue. The conflicting brand had already been applied for in the European Union in 2009 by Shoe Branding BVBA. Almost 10 years later, the Court decided that the mark used by Shoe Branding cannot be registered after all.
In 2009, Shoe Branding filed an application for a European trademark registration for the following brand:
The trademark was described in the application as follows: "The trademark is a position mark. It consists of two parallel lines placed on the outside of the upper part of a shoe. The parallel lines run from the sole edge of a shoe and runs back diagonally to the centre of the shoe's instep. The dotted line indicates the position of the trademark and is not part of the brand." The goods for which this mark was applied for is "footwear".
On publication, Adidas objected to the EU registration of the mark by Shoe Branding. It was based the following earlier rights, registered for "footwear":
EU brand 3517645:
The brand is described as follows: "The mark consists of three, equally sized and equally wide, parallel stripes affixed to footwear; the stripes are positioned at the top of the footwear in the area between the laces and the sole "
German brand 39950559:
This brand is described as follows: "The brand consists of three stripes that form a contrast with the basic colour of the shoe. The shape of the shoe serves only to indicate how the trademark is affixed, but as such is not part of the trademark".
Adidas was of the opinion that both brands were similar in a way that is confusing and that by using the 2-stripe mark Shoe Branding would take unfair advantage of or detract from the distinctive character or the reputation of the Adidas 3-stripe brand.
The opposition was initially rejected. After the appeal had been lodged, the Board of Appeal of the European Office upheld the opposition in the interim period.
Shoe Branding BVBA then submitted a request to the European Court of First Instance to annul the decision of the Chamber of Appeal. According to Shoe Branding BVBA, the Board of Appeal had demonstrated various misconceptions regarding proof of the reputation of the earlier trademark, the existence of an infringement of the reputation or the distinctive character of this trademark and the absence of a valid reason for using the trademark applied for.
However, in its judgment the European Court of First Instance did not follow the complaints of Shoe Branding and confirmed the reputation of the Adidas 3-stripe trademark, as well as the detriment to this reputation or the distinctive character of the Adidas brand resulting from the use of the 2-stripe trademark by Shoe Branding.
In addition, the European Court of First Instance followed the reasoning that the conflicting marks both consist of parallel stripes, affixed to a shoe and are therefore similar to a certain extent. Shoe Branding's argument that the Adidas brand intrinsically has a very weak distinctive character is, according to the European Court of First Instance, no longer relevant in view of the fact that the intensive use of the 3-stripe trademark by Adidas has created public recognition that exceeds the intrinsic distinctive character.
Under certain circumstances, there are valid reasons why the use of a trademark that infringes a well-known trademark may be permitted. In the present case, however, the European Court of First Instance states that Shoe Branding has not sufficiently demonstrated that the trademark was used throughout the EU, that the alleged coexistence between the two brands is peaceful and that Shoe Branding applied to use the trademark in good faith.
The European Court of First Instance dismissed the appeal against the decision of the Board of Appeal in its entirety and thus full upheld the appeal by Adidas.