This month, Adidas issued court proceedings against Ecco in the US District Court of Oregon claiming that Ecco infringed its three-stripe trade mark by selling footwear featuring three and four parallel stripes.
Adidas claimed in its filing documents that the stripes on Ecco’s footwear (pictured below) are likely to mislead the public and confuse consumers regarding the source of the products.
Adidas is seeking a court order preventing Ecco from selling footwear with what it claims are misleading stripes. Adidas is also seeking a court order compelling Ecco to turn over all its profits relating to the sale of the contested footwear. It is also seeking monetary and punitive damages.
In March, Adidas also issued court proceedings against Athletic Propulsion Labs (APL), again claiming infringement of its three-stripe trade mark and arguing that APL’s products could cause confusion or deceive the public because it sells footwear bearing four stripes (pictures below).
Adidas claimed in its filing documents that the purchasing public has come to associate the three-stripe logo with Adidas and the mark is associated with its sponsorship of artists such as Katy Perry and Kanye West, as well as NFL stars and NBA stars, and that the three-stripe logo generates billions of dollars in sales internationally and hundreds of millions of dollars in the US alone.
Adidas is seeking a court order preventing production of the contested styles of footwear. It is also seeking damages.
Shoe Branding Europe
In February, the Court of Justice of the European Union ruled in favour of Adidas that it had the right to oppose an application made by Shoe Branding Europe (a Belgian Company) seeking to register a trade mark incorporating two parallel stripes, equidistant and of the same width, placed on the outside of a sports shoe (picture below).
There are a few points to be taken away from the ongoing Adidas three-stripes saga –
First, trade marks are valuable assets. Trade mark cases with large companies such as Adidas demonstrate how important trade marks are for protecting the value in the company’s image and brand, as well as its consumer base.
Second, trade mark owners should remain on the look-out for infringement and take action when necessary. Adidas clearly has an appetite for litigation and obviously intends to vigorously defend its trade mark portfolio. In addition to the ‘three-stripes’ proceedings referred to above, Adidas was also recently awarded an injunction against Skechers it relation to (amongst other things) its “Stan Smith” footwear design.
Finally, simple signs may be protected as trade marks. It may be possible to register even simple signs such as parallel lines as trade marks and such mark may also acquire distinctiveness over time. Accordingly, applicants intending to file new trade mark applications (even for marks or signs that are seemingly simple or generic) should always carry out extensive due diligence in advance to avoid the costs and other risks associated with opposition, invalidation and / or infringement proceedings later on.
Briffa advises on contentious and non-contentious trade mark matters, as well as all other aspects of intellectual property law and practice.
Author: Éamon Chawke