Adidas won an interesting opposition against a trademark application for “ADIDOG”, applied for clothing for dogs in Japan.
According to the German manufacturer, which invoked several of its earlier Adidas trademarks, the trademarks in the case at hand were very similar, which in turn could create a consumer cofusion. Another reason that could lead to this conclusion were the fact that Adidas has a significant and longstanding reputation in Japan and that the signs were used for similar goods although the target market is different.
The Japanese Patent Office confirmed this position refusing the ADIDOG” application. This was a second win for Adidas which successfully stopped the following application for combined “ADIDOG” mark some time ago:
Source: The Fashion Law and Masaki Mikami
The UKIPO has ruled in a case where the German sportswear manufacturer Adidas initiated cancelation procedure against a UK trademark ADDICTED, covering clothing as well as various retail, retail finance, and interior design services. Adidas invoked its earlier combined trademark for the same goods and services.
The grounds for this cancelation were a similarity between the signs, a trademark with reputation and possible unfair competition and tarnishment.
According to the Office, there is no enough similarity between the signs although there is some visual one. Nevertheless, the later mark is not able to create any confusion in the consumer mind regarding the trade origin of the products.
When it comes to taking advantages from the earlier trademark’s reputation, unfair competition, and tarnishment, the UKIPO concluded that there is such a possibility because of which canceled the trademark.
The reasons for this are that for the time being marijuana as a product cannot be freely and legally used. On top of that, the word “Addicted” makes consumer perception even worse. From that perspective, there is a chance when the later mark is used on clothes to create some negative associations and because of its visual similarity with the Adidas trademark these negatives to be transferred to the earlier mark. Apart from this, the later trademark can take advantages of the Adidas reputation on the market that has been built for many years.
Source: Jocelyn Clarke and Christopher Benson, Taylor Wessing за Lexology.
Adidas won an opposition against the following application for a figurative trademark, applied for Class 25 by a Chinese company:
Against this sign, Addidas opposed its following earlier national trademark in Japan in Class 25 too:
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)
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:
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:
This 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.
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:
Against this mark, an opposition was filed by Adidas based on earlier marks for a similar sign:
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.
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“.Shoe 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.
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.
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.
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.