Three stripes and you’re out!
We can all sympathise with a company trying to protect its brand identity, indeed this is exactly why we have a trade mark registration system. However, this system does have limits and every-so-often those limits are tested rather extensively. This is particularly true of the recent saga with an EU trade mark held by adidas…
Way back in 2014 the company registered a slightly unusual trade mark. It was effectively an image of their famous three stripes which was described as consisting of “three parallel equidistant stripes of identical width, applied on the product in any direction”. The fact that adidas were trying to protect their stripes wasn’t particularly unusual, they have a large number of device marks which feature these stripes displayed on various goods, but it was odd that this mark had no other context and the description was effectively allowing all sorts of variants.
In any event the mark was registered and all was well until later that year a rival company called Shoe Branding Europe applied to invalidate it. There then ensued a lengthy legal battle which has recently resulted in the mark being cancelled (although there is still scope for adidas to appeal).
The view of the powers that be was that adidas’ mark was insufficiently distinctive and had failed to acquire a distinctive character through use in the relevant jurisdiction – a particularly tricky thing for adidas to prove given that an EU trade mark currently covers 28 different countries (soon to be 27 when Boris has his way).
Ultimately therefore if this decision can’t be overcome adidas will have to rely on other trade mark rights to enforce its brand. Whilst we expect it to continue to pursue third parties who use its famous stripes without permission, it will now face more of an uphill battle which may result in other brands creating goods which are at least reminiscent of adidas’ products.
This is a good reminder to brand owners that even registered trade marks can be challenged and, in certain circumstances, cancelled. Depending on which side of the fence you sit, this is either good news or bad but, either way, all brand owners should think carefully about what makes their goods or services recognisable and do their upmost to either protect their monopoly or prevent others from taking theirs too far. Fortunately, Briffa is on hand to advise on all aspects of trade mark law and you can speak to one of our friendly solicitors by calling 020 7288 6003 or emailing [email protected]