ADIDAS three vertical parallel black stripes: lack of distinctiveness

The ADIDAS group, filed an application for a figurative EU trademark dated December 18, 2013 which represents three vertical parallel black stripes:

The applied goods embodied in the application form:

• Class 25: Clothing; Footwear; Headgear.

EUIPO accepted on May 21, 2014 the registration of the mark under Registration No. 12442166. However, in December 2014, an application for declaration of invalidity was filed against the subject mark based on lack of distinctiveness pursuant to Article 59 (1)(a) of Regulation 2017/1001 in conjunction with Article 7(1)(b) of the quoted Regulation. In first Instance, the Cancellation Division accepted the nullity claim, as considered that the mark at issue was devoid of any distinctive character, both inherent and acquired through use. ADIDAS filed an appeal, where it was not denied the acquired distinctiveness of the mark, but claimed the acquired distinctiveness through continuous us as to comply with registry threshold pursuant to Article (7)(3) and Article 59(2) of the Regulation 2017/2001.

The Office considered that the submitted body of evidence filed to prove the acquired distintinctiveness through the use were not sufficient. Thus, the Appeal filed by ADIDAS was fully dismissed.

The Ninth Chamber of the European Union General Court, has now issued the final Judgment dated June 19, 2019. In particular, the Court clearly argues and clarifies the appellant claims(Adidas) as follows:

• The misinterpretation of the mark at issue. ADIDAS held that regardless of the initial registration of the mark as a figurative trademark, it must be considered by the Court as a “surface pattern” that may be reproduced in different dimensions and proportions depending on the goods which it is applied, being the size not a rigid proportion. The General Court has highlighted one more time that a trademark can only be assessed and considered based on the claims embodied in the initial application for registration. This allegation is thus disregarded.
• Misapplication of the “law of permissible variations”. ADIDAS states that the provided evidence must be considered sufficient by the Office as to acknowledge the acquired distinctiveness through use, since the subject trademark has been used in a way that the distinctive character is not modified. In this regard, the General Court holds that the documents supporting the use evidence are not enough as to justify that the mark at issue has been sufficiently used as to reach the Office´s threshold to maintain the registration.

• Alleging an error of assessment regarding the acquisition of the distinctive character through use. The General Court considers that the only body of evidence provided by ADIDAS complying with the well know doctrine of the Court as to prove the acquired distinctiveness of the mark, are only five market surveys which only cover 5 EU Member states. Consequently, this surveys cannot be extrapolated to the remaining 23 Member States. Therefore, the claim is disregarded.

Judgement of the General Court (Ninth Chamber, Extended Composition) of June 19, 2019, Matter T307/17.

HERNANDEZ MARTI has extensive experience in providing advice relating to Spanish and EU trade marks and trade names, as well as defending them before courts specialising in said matters.