Fashionista has been reading a recent decision about a two stripe trade mark on sports shoes.  The case concerned an application for a Community trade mark, a position mark, consisting of “two parallel lines positioned on the outside surface of the upper part of a shoe…the parallel lines run from the sole edge of a shoe and slope backwards to the middle of the instep of a shoe.  The dotted line marks the position of the trade mark and does not form part of the mark” (as seen on the representation below).

BVBASHOE

 

Adidas filed an opposition and this was initially rejected both by OHIM’s Opposition Division and the Board of Appeals.  Both those decisions were overturned by the decision of the General Court.  Adidas relied on a number of its figurative registered and unregistered marks consisting of three parallel stripes positioned on the side of the shoe, which run from the edge of the sole and slope backwards to the middle of the instep of the shoe.  The decision in Adidas’ favour was based on its mark depicted below which consists of “three parallel equally spaced stripes applied to footwear, the stripes positioned on the footwear upper in the area between the laces and the sole”.  When Fashionista compares the two stripe trainers above to Adidas’ 3 stripe version below, she’s not confused, but then Fashionista is unlikely to be the average consumer!

Adidasshoe

The General Court criticised the Board of Appeal’s failure to consider all the elements of the marks when assessing confusing similarity.  The Board had dismissed the two stripes as ‘banal decorative elements’ and so didn’t place a great deal of importance on these when comparing the marks, placing more emphasis on what they considered to be the ‘decisive factors’, being the different number of stripes and the different respective positions and inclination of the stripes.  The General Court said this was wrong because Adidas’ 3 stripe mark enjoys a very high degree of reputation and this supported a finding of confusing similarity given the average consumer’s degree of attention to the design of sport shoes.  While consumers do pay attention to the design of the outside of the shoe and general configuration, they tend not to focus on the specific positioning or inclination of the stripes.

The General Court decided that the reduced number of stripes was not a sufficient difference to outweigh the similarities.  Some may argue that if a mark enjoys such a high degree of reputation in its 3 stripes, then most consumers would surely not be confused when faced with sports shoe that had only 2.  However, the test for trade mark infringement has never been premised on actual confusion. Fashionista can understand why Adidas objected to a third party shoe maker seeking its own trade mark for stripes on a sports shoe.  Only brands like Adidas who have invested over years to achieve a substantial reputation and therefore demonstrate acquired distinctiveness should be able to monopolise something which would otherwise be a decorative adornment, available for use by all.

 

By: Sarah Wright
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