Adidas - 3 Stripes And You're Out

We have previously written here about the ongoing issues surrounding Adidas and their 3 stripe logo. The latest episode in this long running saga has now been written. On this occasion the question before the EU IPO Appeal Court ("AC") was whether the Cancellation Division ("CD") had erred in upholding the invalidity request of Shoe Branding Europe BVBA over the figurative '3 stripe' mark registered by Adidas AG ("Adidas") on 21 May 2014. The CD held that amongst the evidence were many different variations of the mark, "but hardly any of them come close to the mark as registered".

In coming to their decision the AC considered the arguments made at first instance and whether the description of the mark fatally conflicted with the classification of the mark as "figurative". Adidas agreed that the mark itself was devoid of distinctive character, but argued that it had acquired distinctiveness. The AC held however that Adidas had not provided sufficient examples to prove acquired distinctiveness, and that therefore the otherwise impressive advertising and sales figures could not be anchored to the disputed mark.

The surveys conducted on behalf of Adidas did little to support its case. The Spanish survey is criticised by the AC as it refers to the phrase "tres bondas", which although descriptive of the mark, is not representative of it. The UK survey was irrelevant: it asked participants to "mentally associate" a shoe bearing three stripes with the Adidas brand. The stripes on the shoe were representative of a different mark held by Adidas.

We then turn to why the voluminous evidence was insufficient to support the acquired distinctiveness of the mark. The AC supported the CD in finding that the examples amongst the evidence were often not only irrelevant, but also substantially different from the mark.

This approach touched much of the evidence, and the court were not shy in criticising the preparation of it, stating that "…a large part of the material appears to have been included merely to beef up appearances, to give a false impression of solidity of evidence". This criticism is levelled more than once, with repeated references to 10,000 or 12,000 pages of evidence being submitted by Adidas, and much of it being irrelevant.

This should not detract from the surprising assumptions made by the AC in reaching its decision: it described the three stripes as being "decorative" rather than denominative, but there are undoubtedly instances where Adidas branded clothing features three black stripes as displayed in the mark.

This should serve as a lesson to parties to ensure that attempts to "beef up" evidence do not actually subtract from its voracity. Hiding good points amongst bad is rarely a winning strategy, and Adidas may take heed of their rebuke in the inevitable next stage.