The EU General Court denies Adidas AG exclusive rights to three stripes

Header image: Bogdan Glisik / Unsplash

On 19 June 2019, the EU General Court rejected Adidas AG’s right to enforce and maintain their three-striped EU trademark. The underlying reason for this decision is a long-standing dispute between the company “Shoe Branding Europe BVBA” and Adidas AG about stripes.

Here is an image of Adidas AG’s registered trademark, which was recently cancelled by the EU General Court. Photo: EUIPO

The conflict between Shoe Branding Europe BVBA and Adidas AG led to Shoe Branding Europe BVBA requesting a cancellation of the trademark with the three stripes registered by Adidas AG. They pointed out that the registered stripes were neither distinctive nor incorporated.

During the case, Adidas AG had provided a number of different forms of documentation stating that their three stripes were distinctive and recognized as a trademark. However, the Court found that most of the material was invalid, partly because several of the documents did not carry the trademark, and partly because no information on the extend and duration of the sale was presented to the Court in addition to information on how the sale had impacted the relevant buyers.

Evidence considered insufficient

Adidas AG presented their marketing budget as well as five market surveys. The court rejected the budget as evidence, because it was unable to deduce which part of the budget that concerned the particular trademark.
In general, the Court attributes limited value to market research. But in this case, the Court found that Adidas AG’s market research was in fact the only supporting evidence in the case.

EU legislation does not require documentation from each EU member state. However, it does require that the documents can be ascribed to multiple countries under the same distribution network or that the implied countries have similar marketing channels, culture or linguistic closeness.

Adidas AG’s submitted market research covered only five member states, which is obviously a minor part of the EU. Therefore, the Court considered the evidence provided by Adidas AG insufficient. Based on this conclusion, Adidas AG’s three-striped trademark was, according to the EU General Court, not considered distinctive throughout the entire EU, and Adidas AG’s trademark registration for the three stripes was thus cancelled.

The case is likely to continue

Adidas AG cannot be satisfied with the outcome of the case. We therefore expect they will appeal the decision. We will follow the process closely.

As you might know, EUIPO recently settled another case where the BIGMAC trademark was cancelled. The two cases are not entirely comparable, but they both show how significant evidence is and how strict the  requirements for documentation are – probably more strict than any had anticipated so far.

The decisions also show us that it is not the quantity of documentation that matters, but rather the quality. EU is a single market and this is reflected in the recent decision, which is based on the fact that material can well relate to several countries as long as it relates to the EU as a whole.

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