The similarity between a two stripe design for shoes and adidas’ earlier trade mark for its renowned three stripe shoe, combined with adidas’ significant reputation in that mark, means that adidas can oppose the two stripe application for use on shoes, as there is a substantial risk that the use of the two stripe mark being applied for is taking unfair advantage of the reputation of adidas’ mark.
This decision by the EU General Court on 1 March 2018 (cases T-85/16 and T-629/16) is a reminder that the courts will take a strict view on trade mark applications that sail too close to famous marks. In this case, the General Court was particularly scathing of a 2007 advertising campaign used once by a licensee of Shoe Branding Europe, which featured the slogan “Two stripes are enough”. The General Court considered this as evidence of the risk of unfair advantage being taken of the repute of the adidas mark by Shoe Branding Europe. Care must be taken by brand owners not to engage in, and to ensure that any licensees do not engage in, marketing campaigns that could be misconstrued as taking advantage of, or seeking to trade on, the repute of a similar earlier mark.
The decision also suggests that any use of the two stripes by Shoe Branding will likely be infringing, given the findings of the General Court in relation to registration and the similarity of the tests for trade mark infringement. Last year, adidas sued Puma in relation to the latter’s use of four stripes on sports footwear.