2019-07-01

Cancellation of the Adidas figurative trademark

The Adidas figurative  trademark stripped by the General Court from the European Union trademark register

On 21 May 2014 Adidas AG obtained the registration of the figurative trademark N°12442166 for clothing, footwear and headgear products of class 25.

The figurative trademark is described as consisting of „three parallel equidistant stripes of equal width applied to the product in whichever direction“.

When the Belgian company Shoe Branding Europe BVBA filed an application for declaration of invalidity, the Cancellation Division granted the application and rejected the registration on the ground that it was devoid of any distinctive character both inherent and acquired through use.

Adidas filed an appeal with the EUIPO against the decision of the Cancellation Division, but the Board of Appeal upheld the decision of the Cancellation Action on 7 March 2017.

Wishing to only dispute the lack of distinctiveness through use, Adidas brought the matter before the General Court, which has however confirmed the invalidity decision of its figurative trademark by a decision on June 19, 2019.

The main reason thereof comes from the fact that Adidas figurative trademark is considered as an ordinary figurative trademark and not as a pattern trademark which exclusively consists of a set of regularly repetitive elements. Neither the graphic representation of the trademark nor the description thereof can contradict this assertion.

Thus the evidence of use provided by Adidas shows alterations of use which could not support the argument of distinctive character through use. In particular Adidas has provided several pieces of evidence of use which do not correspond to the figurative trademark as filed, like for example signs showing three white stripes on a black background instead of the contrary.

Nathalie CAILTEUX