The General Court Of EU Confirms The Invalidity Of Adidas Three-Stripes Trademark

Once again, proof of use seems too high a hurdle for a world-famous trademark: A brief overview of the judgment of the General Court in Case T-307/17 - Adidas v EUIPO - Shoe Branding Europe.

It is hard to find somebody who has never worn a pair of sneakers or another garment featuring the famous "three stripes" at least once in his life. Everybody associates the symbol with Adidas. However, being famous does not exempt trademark owners from the strict requirements of providing evidence, if acquired distinctiveness of a trademark is being claimed as a defense in invalidity proceedings at the EUIPO.

How critical proof of use can be was recently shown in the "Big Mac" decision. This trend is now being continued, although in a different context, by the General Court decision T-307/17 of June 19, 2019. The General Court confirmed the invalidity of one of the Adidas European Union trademarks, a trademark consisting of three parallel stripes on a light background.

Context of the dispute

In 2013, Adidas AG filed an application for registration of an EU trademark with the European Union Intellectual Property Office (EUIPO) for clothing, footwear and headgear.

In the application for registration, the mark is identified as a figurative mark and corresponds to the following description: 'The mark consists of three parallel equidistant stripes of identical width, applied on the product in any direction.'

This trademark was registered in 2014. Shortly after that, the company, Shoe Branding Europe BVBA, applied for a declaration of invalidity of the mark. The Cancellation Division held the application to be invalid on the ground that the mark at issue was devoid of any distinctive character, both inherent and acquired through use. In its subsequent appeal, Adidas did not dispute the lack of inherent distinctiveness of the mark at issue, but they claimed that that mark had acquired distinctiveness through widespread use throughout the Union. In 2017 the Second Board of Appeal of EUIPO dismissed the appeal.

In the application for registration, the mark is identified as a figurative mark with the following description: 'The mark consists of three parallel equidistant stripes of identical width, applied on the product in any direction.'

The Board of Appeal stated:

That the mark at issue had been validly registered as a figurative mark, It confirmed the Cancellation Division's assessment that the mark was inherently devoid of distinctive character and...