The German sportswear producer Adidas lost a trademark lawsuit against the famous designer Thom Browne in the US.
The dispute concerns an accusation by Adidas that Thom Browne uses a four strips design pattern that is confusingly similar to the famous three stripes pattern used by the German company that was initially introduced in 1952. For this pattern, Adidas owns a bunch of trademarks around the world including in the US.
Thom Browne uses four stripes pattern for his clothes now but in 2007 he settled a dispute with Adidas because he had used three stripes the years before.
The main issue with the current lawsuit was whether the four stripes pattern is confusingly similar to the three stripes one and what’s more whether this four-stripe design is not actually three-stripe if only the black stripes were counted.
The court dismissed the infringement claim stating that Adidas failed to prove that consumers would be confused between both patterns. One of the reasons was that both companies are not direct competitors. Thom Browne’s products are only high-priced while those of Adidas are affordable by most people. In addition, other companies used different patterns with stripes too, that is to say, this was not uncommon practice as a whole.
Source: The Guardian.
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)
Carlos Castrillo published an interesting article for Marques Class 46 regarding the practice for awarding damages for trademark infringements in Argentina.
In order such damages to be given, the law in the country requires:
- The existence of an infringement.
- Made with fraud or fault.
- Causing proved loss or damage.
Damage cannot be inferred; it has to be proved. The local court’s practice has refused such damages until now. This gave relative peace of trademark infringers in the country because they only risk a cease-and-desist order together with the payment of professional fees.
In a new lawsuit between Adidas and Juan Carlos Chilemi SRL, however, the Court of Appeal ordered damages in the amount of 55 000 dollars despite the fact that Adidas failed to prove any loses.
The court based its decision on an exception in the Civil Procedure Code which gives the authorizes to grant damages if the damages are proven to have occurred but are difficult to determine.
The full article can be found here.
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.