Adidas reputation held to be taken advantage of by EUIPO

An ongoing dispute between shoe branding’s Trade Mark application and Adidas has been given a decision by the European Union Intellectual Property Office (EUIPO).

Shoe Branding Europe BVBA v European union Intellectual Property Office Cases T-85/16 and T-629/16

Adidas has disputed two applications by shoe branding to file under classes 9 which refers to safety footwear, and class 25 for footwear in general. Their reason for this dispute was because both marks were considered as too similar and would give shoe branding an unfair advantage off the back of Adidas’ reputation. The design mark was argued to be similar to the famous adidas stripes on the side of the trainer a headache for designers across the globe.

The case was heard in the Court of Justice of the European Union, and the similarities were held to be very similar. The decision was appealed and through the EUIPO board of appeal, and it was upheld on the basis that a consumer may link the two brands as the same. The court considered the following when making their decision “the degree of proximity of the goods, the degree of similarity between the marks, the strength of the earlier mark’s reputation, the degree of the earlier mark’s distinctive character – are the very same as those used to determine whether an unfair advantage is being or is likely to be taken.”

This decision was interesting because of the argument that stripes on a shoe ostensibly make a consumer assume it is adidas even if there are not the same number of stripes. Shoe Branding had two stripes on a different part of the trainer, and of course Adidas has three stripes. The issue is that it is difficult to allow any possible similarities of shapes on a brand, such as stripes to be distinguishable. This decision suggests that any slight similarity on this basis, even if argued to be clearly dissimilar and hold no confusion to the public, would be rejected to ensure continuity of decision making within the rule. At what point could a mark be considered as dissimilar with a stripe? Does the amount of stripes matter or could ten stripes, or just one stripe make the difference to the consumer in the eyes of the court?

Only time will tell……!

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