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On March 1, the European Union General Court (EGC) ruled in favor of Adidas AG in a lawsuit it brought against Belgian company Shoe Branding Europe BVBA, opposing a trademark application for two parallel stripes on shoes the latter made to the European Union in 2009. Adidas opposed the application as it was too similar to its own iconic three-stripe design.

 

As was to be expected, the process had its difficulties: first, the European Union Intellectual Property Office’s Second Board of Appeals rejected Adidas’s opposition, considering that the trademarks in question were globally different. Adidas challenged the decision with the EGC, basing its argument on the protection of the reputation of trademarks under article 8.5 of Regulation 207/2009 on Community trademarks. The EGC canceled the mentioned decision, and the Second Board of Appeals re-examined and upheld the appeal filed by Adidas given the similarity of the disputed trademarks, the identity of the products linked to those trademarks and the distinctive repute of the earlier trademark. Shoe Branding Europe appealed this decision with the EGC, but the EGC rejected the appeal for the reasons we state below.

The EGC referred to the reinforced protection of reputed trademarks, which depends on compliance with a series of accumulative requirements: the earlier trademark must be registered, the trademarks disputed must be identical or similar and the earlier trademark must be reputed in the European Union. The use without due cause of the trademark applied for must take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark, understanding repute as knowledge of the trademark by a large part of the public interested in the products and services protected by that trademark.

Thus, the EGC acknowledges that during the process, Adidas sufficiently demonstrated the high, long-held and enduring reputation of the trademark in question. Adidas presented evidence proving the trademark’s reputation, including a sworn declaration regarding the business volume of the controversial trademark and the investment in publicity and sponsorship, newspaper clippings, court rulings and investigations about its market share and reputation.

Also, the EGC stated that it is enough for there to be a certain degree of similarity between the reputed trademark and the trademark applied for to lead the relevant public to establish a link between the two trademarks, without it being necessary for there to be a risk of confusion between the controversial trademarks. In this case, the EGC confirms that (i) the different length and color of the stripes of the trademarks at issue, and (ii) the fact that the earlier trademark is a figurative trademark and the trademark applied for is a position mark, cannot be considered circumstances that reduce the degree of similarity between the trademarks.

Also, the EGC does not believe that the situation meets the requirements to consider that Shoe Branding Europe is protected by a due cause for use of the trademark in question, because it did not prove that it used the trademark applied for throughout the European Union or that there was a peaceful coexistence between the two trademarks in the market. The EGC adds that Shoe Branding Europe’s use of the slogan “two stripes are enough” shows that use of the trademark applied for was not always in good faith.

To conclude, and although Adidas had to, once again, endure a marathon process to defend its intangible rights, it has managed, once again, to keep the exclusivity of its trademark.

 

Authors:  Paula Conde and Ane Alonso

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ane.alonso@cuatrecasas.com