Adidas won a trademark opposition in Japan

great-torii-of-miyajima-1425480_960_720.jpgAdidas won an opposition against the following application for a figurative trademark, applied for Class 25 by a Chinese company:

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Against this sign, Addidas opposed its following earlier national trademark in Japan in Class 25 too:

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According to the German producer, both signs are confusingly similar because their visual elements create a similar impression in consumers. What’s more, Adidas’s mark has a reputation which increases, even more, the risk of confusion.

The Opposition Board coalesce with Adidas concluding that there is a possibility for consumer confusion because both signs are visually similar for identical goods and all of that is supported by the earlier trademark’s reputation.

Source:  Masaki Mikami, MARKS IP LAW FIRM (JAPAN) 

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Adidas won a trademark case in Japan

Masaki MIKAMI informs about a trademark victory of Adidas in Japan. The case concerns the following registered trademark by a Japanese company for Class 25:

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Adidas filed an opposition against this mark but unsuccessfully. Fore years later the company initiated an invalidation procedure, just before the five years period of acquiescence. Adidas based its move on the following earlier trademark:

adidas-300x261This time, the Patent Office ruled that both signs are similar and the later mark had to be invalidated because:

  • The Adidas’ mark is a mark with a strong reputation in Japan, proved since 1971;
  • The mark hadn’t been changed significantly throughout this period of time;
  • The later mark gives rise to the same visual impression in the consumer’s mind by sharing similar graphical representations.

Source: Marks IP.

 

 

Adidas with an important victory before the General Court of the EU

The General Court of the EU ruled in Cases T-629/16 and T-85/16 Shoe Branding Europe BVBA v EUIPO.

These cases concern an attempt by Shoe Branding to register the following EU trademark for Class 25:

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Against this mark, an opposition was filed by Adidas based on earlier marks for a similar sign:

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EUIPO upheld the opposition, finding that there is a likelihood of confusion based on the similarity of the signs and the reputation attached to the Adidas’ earlier marks.

Shoe Branding appealed before the Court claiming that there is no similarity and what’s more both signs had been peacefully coexisting in Germany for many years.

The Court upheld the EUIPO’s decision as correct. Apart from the fact that both marks are confusingly similar, according to the court, the applicant was trying to take unfair advantages from the proved reputation of the earlier marks. An evidence for this was an advertising slogan “TWO STRIPES ARE ENOUGH“ used in Portugal, which indirectly made a link with the Adidas’ marks.

With regard to the trademarks coexistence, the Court dismissed it, because there was no evidence for such on an EU level.

 

A problem for Adidas’ figurative EU trademark

EUIPO took a decision in case № № R 1515/2016-2 which concerns invalidation of the following EU trademark registered for Class 25  “clothing; footwear; headgear“.UntitledShoe Branding Europe BVBA sought to invalidate the mark based on  Article 52(1)(a) in conjunction with Article 7(1)(b) EUTMR, lack of distinctiveness.

EUIPO  upheld this request stating that as it is presented this three-striped mark was likely to go unnoticed by most consumers, taking into account that these three stripes could be used as decoration for the particular goods specified in the application.

Adidas submitted 12 000 pages with pieces of evidence that the mark was distinctive enough to serve as a trade origin sign.

EUIPO dismissed these materials as insufficient and not precise. For instance, EUIPO considered that the submitted examples showing the real use of the sign are different from the way in which it is registered because they show two black stripes only.

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The submitted surveys did not serve to establish acquired distinctiveness either because indicated a connection with other Adidas marks without assessing the separate distinctiveness of the three stripes figurative mark alone.

For more information here.

FC Barcelona settled a dispute with Adidas AG in US

Last year this blog reported here about a case arose between Adidas AG and FC Barcelona where the German company filed an opposition against a US trademark application for the following mark, for Classes 18, 25, 28, owned by FC Barcelona.

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Recently WIPR has reported about the end of this opposition. According to the information, Barcelona withdrew its application taking into account the earlier rights of Adidas stated in the opposition regarding three stripes signs.

 

Adidas attacked Barcelona’s trademark in US

WIPR reports about an interesting trade mark case from US. It concerns an opposition filed by the German sportswear company Adidas against the following application for US mark by F.C. Barcelona:

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This mark is applied for the following goods:

Class 16 – Paper; cardboard; goods made from paper, namely, boxes of paper, packing paper; goods made from cardboard, namely, boxes of cardboard, cardboard packaging; bookbinding materials; artists’ materials, namely, artists’ pens, artists’ brushes, artists’ pastels; paintbrushes; typewriters; office requisites, namely, adhesive tape dispensers, correcting fluid for type, finger-stalls, franking machines, envelope sealing machines, punches, rubber bands, staplers; printed instructional or teaching materials in the fields of sports; printing type; printed magazines, books, pamphlets, catalogs, printed prospectus, newspapers, and printed periodicals, all in the fields of sports; placards of paper or cardboard; paper labels; posters; prints; photographs; stationery; plastic bags and film for packaging; adhesives for stationery or household purposes; printing blocks

Class 25 – Shirts, tee-shirts, blouses, blousons, parkas, jackets, trousers, gloves, socks, stockings, underwear, pajamas, nightgowns, vests, cloaks, shawls, coats, scarves, jerseys, skirts, dresses, neckties, belts, suspenders, bathing suits; sportswear, namely, basketball jerseys, soccer shorts and jerseys, cloth nappies, boas for wearing around the neck, non-electric foot muffs and biretta, cloth bibs, half belts, ski gloves, skateboard gloves, riding gloves, pumps, stoles, brassieres, liveries, shirt fronts, pelisses, pelerines, slips, hosiery; caps, raincoats, anoraks; overalls; stoles; suits; chemises; footwear and headwea.

Class 28 – Games, namely, board games; toys, namely, dolls, action figures; gymnastic and sporting articles, namely, gloves for goalkeepers, hockey golf gloves, footballs, soccer balls, basketballs, basketball nets, tennis balls, nets, rackets, racket covers, racket strings, racket presses and uprights, soccer knee pads, leg pads, elbow pads and goal nets, head guards for karate; articles for hunting or fishing, namely, fishing poles, hunting blinds, hunting bows; decorations for Christmas trees; playing cards

The opposition is based on a family of earlier marks for ‘Three-stripe’ have been using by Addidas since 1952 in US.Some of them are:

According to the company the similar stripes containing in the later mark could create consumer confusion and can injure the company’s interests in the US market.

The result from this case is forthcoming and it is an exciting example for protection of figurative trademarks in practice.

Adidas won a lawsuit regarding its stripes in EU

Adidas won a lawsuit against the Belgian company Shoe Branding regarding a dispute about trademarks.

In 2009, Shoe Branding applied for the following European trademark for Class 25:

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Against this application was filed an opposition by Adidas on the ground of the following earlier trademark for Class 25:

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Initially OHIM dismissed the opposition because according to the Office the difference in the number of stripes and their position on the sneakers are quite sufficient to overcome any doubts for possible similarity and confusion between both trademarks.

The submitted evidences for acquired reputation related with the earlier mark were irrelevant taking into account the lack of necessary degree of similarity between the signs.

This decision was appealed.

The General Court reversed the OHIM’s decision because according to the court despite the difference in the number of stripes and their relevant position, the overall impression creating by the earlier mark is very close to that presented by the Adidas’ mark.

The European court upheld this decision.

Source: WIPR.