It matters that it's black on white (stripes)

Shoe Branding Europe has so far been successful in its cancellation action of Adidas’s European Union Trade Mark registration for its three black stripes on a white background (or is it two white stripes on a black background?).

Why does it matter? Because all parallel stripes are not equal.

This is not the end of Adidas’s repository of three striped marks but this particular European Union registration may be on its way out.

The figurative mark (or a pattern mark)?

Shoe Branding Europe applied to cancel Adidas’s registered trade mark on the basis that it was not distinctive. The cancellation proceedings have seen two rounds of appeals. The most recent is the appeal decision* by the General Court, essentially upholding the decisions of the Cancellation division and the Board of Appeal. This could be appealed further so there may be more decisions to come.

Adidas claimed that the tribunal misinterpreted what type of mark the registered mark was; and also wrongly disregarded its evidence of acquired distinctiveness.

Adidas’s trade mark of its three parallel black vertical stripes as represented in its application for registration is shown below. It was described in the application as:

‘The mark consists of three parallel equidistant stripes of identical width, applied on the product in any direction'. The registration was granted for clothing, footwear and headgear.

Adidas claimed that its trade mark as registered was in fact a ‘surface pattern’ that could be reproduced in different dimensions and proportions depending on the goods on which it was applied. The three parallel equidistant stripes constituting the mark could be extended or cut in different ways, including cut at a slanted angle.

This contention was dismissed by the General Court. The trade mark was held to be a simple mark, characterised by a ratio of around 5 to 1 between the total height and width and its rectangular shape, the three parallel stripes composing it being cut at a right angle. Nothing in the mark showed that the length of the stripes could be modified or that the stripes could be cut at a slanted angle. Neither the representation nor the description of the mark made it apparent that it was made up of a series of regularly repeating elements as would be expected of a pattern mark. Characteristics not set out in the description could not be taken into account. Once a trade mark is registered, the proprietor is not entitled to a broader protection than that afforded by that graphic representation and any description of the mark supplied in the application.

Permissible variations - is two equal to three?

In order to prevent the cancellation of the registration, Adidas submitted large volumes of use of its three striped mark. See some of the images below. It wanted to show acquired distinctiveness - that its trade mark had by its use acquired the ability to indicate that goods bearing the mark originated from a particular source.

In principle, a trade mark does not need to be reproduced in evidence of use exactly as it has been registered. The use of the trade mark in forms which differ solely by insignificant variations are broadly equivalent to each other.

The majority of Adidas’s images showed use of a three white-striped mark against a dark background-an inversion of the colour scheme even though the light and dark contrast was maintained, images showing sloping stripes , images where the stripes were thicker and slanting and the relative dimensions were different from the registered trade mark, images of stripes on goods not covered by the registration, images of complex logos that were irrelevant to the case, etc.

Adidas’s trade mark was held to be extremely simple, to which Adidas did not disagree. Even minor alterations to a simple mark can constitute significant changes to the essential characteristics of the mark.The variations were not considered equivalent to the registered trade mark.

The fact that in similar cases of Adidas’s trade mark two German courts and a French court did not consider the inversion of the colour scheme significant did not help Adidas before the European Union office. The EU trade mark regime applies independently of any national system

Adidas’ evidence of sales and promotion of its goods and its market share also did not help as it was not possible to link the figures to the specific trade mark, as well as to the goods in question. Adidas also produced a number of market surveys. Of these only five surveys were found to be relevant to show distinctive character acquired through use in five countries. That was considered insufficient to show acquired distinctiveness across all the markets of the European Union.

 It is useful to bear in mind that the protection given to a registered trade mark is limited to what is shown in the application for registration. Owners need to be careful to note that variations of the mark in use may not always be equivalent to the registered mark. Simple marks are attractive to owners but can be difficult to protect and it can also be challenging to fend off attacks. Evidence of use needs to address the mark and the goods and the territory in question under a registration otherwise large volumes of evidence might not serve much purpose. *T-307/17