Photo Markus Spiske
(LUXEMBOURG) – The adidas EU trade mark, which consists of three parallel stripes applied in any direction, is invalid, the EU’s top Court ruled Wednesday, as the firm failed to prove the mark’s distinctive character.
In 2014, the European Union Intellectual Property Office (EUIPO) registered, in favour of adidas, the following EU trade mark for clothing, footwear and headgear.
In its application for registration, adidas had described the mark as consisting of three parallel equidistant stripes of identical width, applied on the product in any direction.
In 2016, following an application for declaration of invalidity filed by the Belgian undertaking Shoe Branding Europe BVBA, EUIPO annulled the registration of that mark on the ground that it was devoid of any distinctive character, both inherent and acquired through use. According to EUIPO, the mark should not have been registered. In particular, adidas had failed to establish that the mark had acquired distinctive character through use throughout the EU.
In its judgment, the General Court upholds the annulment decision, dismissing the action brought by adidas against the EUIPO decision.
The General Court notes, first of all, that the mark is not a pattern mark composed of a series of regularly repetitive elements, but an ordinary figurative mark.
The General Court also finds that the forms of use which fail to respect the other essential characteristics of the mark, such as its colour scheme (black stripes against white background), cannot be taken into account.
Therefore, the Court says EUIPO was correct to dismiss numerous pieces of evidence produced by adidas on the ground that they concern other signs, such as, in particular, signs for which the colour scheme had been reversed (white stripes against black background).
Finally, the General Court notes that EUIPO did not commit an error of assessment in finding that adidas had not proved that the mark at issue had been used throughout the territory of the European Union and that it had acquired, in the whole of that territory, distinctive character following the use which had been made of it. From the evidence produced by adidas, the only evidence which is, to some extent, relevant relates to only five Member States and cannot, in the present case, be extrapolated to the entire territory of the EU.
NOTE: EU trade marks are valid for the entire territory of the EU and coexist with national trade marks.Applications for registration of a EU trade mark are addressed to EUIPO. Actions against its decisions may be brought before the General Court.
