20/02/2024
Last week we looked at the registration of triangle marks, and a case study on EUIPO applications filed by Prada. This week we take a look at the challenges with stripe marks.
Adidas v Thom Browne
Thom Browne, the luxury fashion brand based in America, applied for a figurative sign shown at Fig 1 below. The EUIPO saw this as five adjacent stripes in red, white and blue (Fig 1), three with the same dimensions and two smaller white stripes at the left and right edges. It was opposed by the athletic apparel and footwear corporation, Adidas based on its own logo mark registrations for three black stripes positioned on the product, and three white stripes on a black background (Fig 2). The dispute has been contested in a number of countries. The EUIPO published its decision on 26th January 2024.
The EUIPO recognized that Adidas’ marks have reputation and a high degree of distinctiveness in the European Union, including in Germany and the Benelux, for sportswear and footwear. To support this claim Adidas, submitted 41 exhibits, including social media analytics, market share data in France, Germany, Italy, Spain and the UK, and surveys carried out in Spain, France, and Sweden.
However, in relation to Thom Browne’s application, the EUIPO ruled that the marks are visually similar only to a low degree, because of the different number of stripes, arrangement, and colours. It therefore ruled that the marks were not sufficiently alike to bring about the likelihood of confusion.
The EUIPO also found that no link would be made between the marks for the purpose of unfair advantage, as the stripes are ‘quite basic shapes’ in the clothing and footwear markets. Thus, the similarities were not distinctive, whereas the differences between the marks would be particularly noticeable.
This decision is in line with the corresponding trade mark infringement case between the parties in America, where it was found that Thom Browne’s mark did not infringe Adidas’ rights.
Puma
In October 2022, the multinational corporation, PUMA SE filed position mark applications for stripes on footwear (Fig 3). Position marks combine the visuals of the logo mark with where the mark is shown when the consumer sees the product. Unfortunately for Puma, on 2nd June 2023 the EUIPO refused the applications for lacking distinctive character. This verdict was reached on the grounds that consumers are used to perceiving stripes as mere ornamentation on footwear, and that the applications would be seen merely as banal stripes rather than an indication of origin of the shoes.
Puma appealed the EUIPO’s refusals, arguing that nearly 40 brands use figurative elements on the sides of shoes as trade marks and that consumers are well accustomed to recognising common shapes as an indication of origin.
Puma also referenced features of the mark that it felt elevated it above banal decoration, including the curve and change in thickness. They referred as well to previously-accepted registrations filed in the name of Puma and other proprietors, which it claimed to be comparable to the marks of these applications.
This led to the Board of Appeal at EUIPO overturning the refusal of the position marks on 1st February 2024. The Board found that the stripes of the sign of the application filed are not ‘a mere basic shape’ and that Puma’s evidence demonstrated consumers can successfully differentiate brands based on signs on the side of footwear.
Significantly, the marks were found to be inherently distinctive, rather than becoming registrable as a result of distinctive character acquired through use.
Final observations
In the case of Adidas, the EUIPO found that the common use of stripes on the side of footwear was a detrimental factor to Adidas opposition; it reduced the likelihood of a link being found between the stripe marks.
In the Puma case, the EUIPO Board of Appeal found that the evidence of use of stripes on the side of shoes by various brand owners supported Puma’s applications; it demonstrated the stripes could act as trade marks.
Stripes are undoubtedly registrable, but the issue isn’t black and white. Be prepared to come under a great deal of scrutiny in any stripe-related applications or oppositions.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
