On 19 June 2019, the EU General decided a case about the validity of Adidas’ EU trade mark registration for three stripes. In the General Court’s decision (see here), the Court upheld the invalidity of the mark on the basis that: (i) the mark wasn’t used consistently and evidence of reversed/amended versions of the mark was inadmissible; and (ii) Adidas failed to show acquired distinctiveness across the EU, providing admissible evidence for only five EU Member States.

Background

In 2013, Adidas applied for EU Trade Mark 12442166 with the depiction (right) and with a description that ‘the mark consists of three parallel equidistant stripes of identical width, applied on the product in any direction.’ The trade mark claimed “Clothing; footwear; headgear” in class 25 and was registered in May 2014.

In December 2014, Shoe Branding Europe BVBA filed an application for a declaration for invalidity on the grounds that the mark was devoid of distinctive character. In June 2016, the EUIPO’s Cancellation Division found that the mark lacked distinctiveness, both inherent and acquired through use. Adidas appealed the initial decision on the grounds that the mark had acquired distinctiveness, even though it did not challenge the finding that it lacked inherent distinctiveness. The EUIPO’s Board of Appeal rejected Adidas’ appeal but this was further appealed to the EU General Court.

The EU General Court’s decision

The EU General Court rejected Adidas’ appeal and upheld the earlier findings of invalidity. In reaching its decision, the Court stated that:

1. the mark is “extremely simple”
2. the mark is not a pattern mark composed of a series of regularly repetitive elements (as Adidas had submitted), but an ordinary figurative mark
3. evidence of use submitted by Adidas that failed to incorporate the other essential characteristics of the mark, such as its colour scheme (being black stripes against white background), cannot be taken into account when considering acquired distinctiveness, and
4. in light of the above, the EUIPO was correct to dismiss numerous pieces of evidence produced by Adidas as they were use of different marks (such as signs for which the colour scheme had been reversed (white stripes against black background)).

The Court also considered that the EUIPO did not commit an error in finding that Adidas had not proved that the trade mark had been used throughout the EU and that it had acquired, in the whole of that territory, distinctive character. From the evidence submitted by Adidas, the only evidence that was relevant related to just five Member States and this could not be extrapolated to the entire territory of the EU. This confirms the position established in the Kit Kat and Big Mac cases.

Adidas may seek to file an appeal, limited to points of law only, before the EU Court of Justice within two months of the decision.