The Court of Justice of the European Union (CJEU) has ruled an Adidas trademark to be invalid following the brand’s dispute with the European Union Intellectual Property Office (EUIPO).
Adidas originally filed an application for registration of an EU trademark with the EUIPO back in December 2013, consisting of “three parallel equidistant stripes of identical width”, which was granted under the registration number 12442166.
The validity of the trademark was called into question by Shoe Branding Europe, which filed an appeal with the EUIPO for a declaration of invalidity on the basis that the mark lacked “any distinctive character, both inherent and acquired through use”.
The dispute was heard by the General Court (Ninth Chamber, Extended Composition), comprised of Stéphane Gervasoni, Lauri Madise, Ricardo da Silva Passos, Krystyna Kowalik-Bańczyk and Colm Mac Eochaidh.
Adidas argued that the trademark was only claimed in specific dimensions and width-height ratios, and was therefore misinterpreted by the Board of Appeal. It further contended that such specifics meant the trademark in question constituted a pattern mark, despite being registered as a figurative mark.
While the CJEU acknowledged that a figurative mark can be defined as “a series of regularly repetitive elements”, it rejected Adidas’ argument of misinterpretation on the grounds that article 7(1)(b) of Council Regulation no. 207/2009 prohibits the registration of trademarks that lack any distinctive character.
The second claim made by Adidas was that the Board of Appeal misapplied the “law of permissible variations” when considering the case. This was disputed by the EUIPO and Shoe Branding, who argued that a rightsholder can only use a trademark in identical form as to how it was registered.
The court considered the simplistic nature of the trademark, inversion of the colour scheme and promotional images cited as evidence by Adidas showing sloping stripes, before rejecting this second claim in its entirety.
The court concluded by dismissing the action and ordering Adidas to pay the costs incurred by the EUIPO and Shoe Branding.