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Three stripes prevail over two

The General Court refused registration of a trademark of two parallel stripes on sports shoes. The difference in the number of stripes did prevent conflict with the adidas trademark of three stripes.

Adidas AG v OHIM (Case T-145/14, judgment of the General Court of 21 May 2015)

The subject of the dispute was a figurative trademark presenting two parallel stripes on an athletic shoe. The mark was filed by the Belgian company Shoe Brand Europe BVBA for footwear (class 25):

dwa pasy

The mark was presented as an example of a “position” mark, involving placement of the mark on goods in a specific place. In this case, the stripes ran from the middle of the sole edge of the shoe and sloped backwards toward the ankle.

Adidas AG filed opposition to the registration based on its earlier marks with three stripes, registered for the same class of goods:

trzy pasy

The main allegations by adidas were:

  • First, the prior marks are similar to the disputed mark to a degree causing a likelihood of confusion (Art. 8(1)(b) of the Trademark Regulation (207/2009).
  • Second, use of a mark similar to the earlier reputed marks of adidas would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier marks (Art. 8(5)).

The Office for Harmonisation in the Internal Market (Trade Marks and Designs) rejected the opposition. It found that the marks were dissimilar because of the difference in the number of stripes and their placement on the shoe, precluding a risk of confusion. OHIM found that it was the location of the stripes on the shoe that indicated the origin of the product, rather than the use of stripes, which was a banal decorative element for sports shoes. This was not changed by the reputation of the adidas marks, their intensive use, or the fact that the conflicting marks were used for the same class of goods. The office found that the relevant public would not perceive a connection between the marks because of the number and location of the stripes.

Adidas challenged the OHIM decision in an action before the CJEU General Court. The court took a critical view of the analysis by OHIM and found that there was a likelihood of confusion between the marks with respect to the origin of the goods. The court reached a different conclusion concerning the relevant public, which it regarded as the overall group of consumers interested in buying sports shoes. OHIM found that the “differences will not pass unnoticed by the consumer who pays attention to the details of sports shoes,” but the court held that this was “at odds with the fact that the consumer of those products does not demonstrate a high degree of attention.” As the court reasoned, “sports shoes are everyday consumer goods,” and “the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.”

The court further found that stripes as such are a characteristic feature of the shoe and play an important role. Consumers would notice the stripes immediately but not the differences in placement or the direction they slanted. Therefore there was a certain degree of visual similarity in the use of stripes on the shoes, which was not undermined by differences in location or direction.

In the court’s view, in assessing the similarity of the marks, OHIM failed to analyse all of the characteristics of the stripes presented in the disputed mark, such as their shape (curved or straight), their size (length and width), and their colour. OHIM ignored the similarities between the stripes, which were:

  • The same width
  • Parallel
  • Placed the same distance apart
  • Contrasting with the background colour of the shoe.

The court found that OHIM had placed too much weight on the number of stripes, but the “difference between two or three stripes cannot be regarded as important for the average consumer with an average level of attention.”

The court also cited the consistent holdings by the Court of Justice that the conflict with a reputed mark under Art. 8(5) of the regulation requires only a certain degree of similarity to the earlier registered mark, “provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them.” The degree of similarity with a reputed mark may be less than that required to demonstrate a “likelihood of confusion” under Art. 8(1)(b). Because here the degree of similarity was sufficient to cause a likelihood of confusion, the opposition was even more justified in the case of a reputed mark under Art. 8(5).

This judgment from the General Court confirms that it is the similarities more than the differences that are decisive for determining whether trademarks are similar. Consumers do not carefully compare the trademarks on goods or analyse their specific characteristics, but only retain a general impression of a mark they recall seeing before. The better known the earlier trademark is—like the adidas trademark of three stripes—the easier it is to associate it with another trademark that resembles it.

Dominika Kwiatkiewicz-Trzaskowska, Intellectual Property Practice, Wardyński & Partners