Adidas Loses "Three Bars" Trademark! Declared Null And Void By the European Court Of Justice

Adidas's "Three Bars" Trademark Was Invalidated by the EU Court! Wouldn't it be the most classic three-way bar on Adidas shoes in the future? It doesn't matter, what matters is the relationship between brand and trademark.

Last week, an Adidas three-bar trademark was declared null and void by the European General Court. The above judgment of the EU ordinary court sounded the alarm bell to all enterprises, including big-name enterprises, reminding the importance of making strategic plans before trademark registration.

Summary of the case

Adidas registered the following EU trademarks (registered trademarks) in 2014:

The trademark included in the registered trademark application is described as "this trademark consists of three parallel, equidistant and equal-width vertical bars, which will be used on goods in any direction".

A Belgian shoe company launched an ineffective challenge. The Second Review Committee of the European Intellectual Property Office declared the registration of the registered trademark invalid in 2016 on the grounds that the trademark lacked intrinsic distinctiveness and had not been proved to have acquired distinctiveness in the European Union, so it should not have been approved for registration in 2014 at the beginning.

Adidas later sued the court. Adidas claims that the registered trademark is a pattern mark rather than a general graphic mark and has gained prominence in the EU after being used.

On June 19, 2019, the EU Ordinary Court upheld the previous invalid ruling made by the Second Review Committee of the EU Intellectual Property Office.

Different EU Interpretations of Registered Trademarks

Whether the content of a trademark application accurately reflects the applicant's protection needs is of paramount importance, and it is not feasible to put forward other protection requests beyond the content and definition already contained in the application.

The EU Ordinary Court stressed that Adidas had already marked the trademark as a graphic trademark at the time of application and did not indicate that it was a pattern trademark. Therefore, registered trademarks can only be protected in terms of the size and proportion presented at the time of registration.

Is the evidence of trademark use consistent with that at the time of registration?

In some cases, the trademark used is slightly different from the registered style. As long as the difference does not affect the distinctive features of the trademark, the evidence of use can still be accepted as valid evidence. Adidas claimed in this case that its trademark has gained prominence in the EU through its use and submitted evidence of its use, but most of the evidence shows three bar figures different from the registered trademark.

The EU Ordinary Court and the Second Review Committee of the EU Intellectual Property Office do not recognize the validity of the evidence for the use of trademarks that are different from the registered patterns, and emphasize the following points:

1. When the trademark itself is very simple, only slight differences in usage patterns may also lead to significant changes in the characteristics of registered patterns;

2. The use of patterns uses the opposite color combination, which inevitably changes the distinctive features of registered patterns;

3. Some evidences show that the actual sign used is two bars instead of three bars;

4. The combination of oblique stripes actually used has changed the distinctive features of the trademark registration style.

Has the trademark gained prominence in the EU?

Adidas claims that the registered trademark has gained prominence in the EU through its use and should therefore remain registered.

Most of the evidence submitted by Adidas was found invalid because it showed that the actual trademark used was different from the registration pattern. The remaining valid evidence was only the market research reports obtained from the five EU member states.

Although the use of trademarks in the whole EU can be inferred based on the evidence in several member countries, in this case, the market survey results of the five EU member countries were finally found to be insufficient to prove that trademarks have gained prominence in the EU.

Reminder to Trademark Owners in this Case

1. Importance of making strategic plan before trademark application. Adidas originally hoped to obtain more protection than it actually obtained, but some descriptions in trademark application directly affected the court's interpretation of the registered trademark.

2. The judgment in this case also highlights the importance of trademark procedures and evidence in litigation. Understanding the scope of protection of registered trademarks, ensuring that the way of use conforms to the scope of protection, and maintaining good records and evidence of use are all very important for maintaining the right of registration in the future or maintaining registration in revocation cases similar to this case.

3. The judgment in this case also highlights that the use of a trademark within the EU will be more stringent.

These problems are very complicated. Trademark owners need to seriously consider entrusting a trademark attorney to handle the business from the very beginning, so as to ensure that they can obtain professional opinions on the applications they intend to submit and the subsequent maintenance, rights protection and defense of their registration rights.

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