The three stripes controversy
By Maria Sol Porro, Trademarks Lawyer and University Professor.
Last June, the General Court of the European Union (EGC) announced one of its most resounding decisions to date, as it confirmed the nullity of the Adidas Community trademark, consisting of three parallel bands, due to the fact that the German company did not demonstrate the distinctive character of it throughout the territory of the European Union (EU).
The legal battle for the three stripes is part of the dispute that Adidas and the Belgian company, Shoe Branding Europe BVBA, began in 2009, when the latter tried to register their two lines against the European Union. In this case, Adidas objected before de European Union Intellectual Property Office (EUIPO) on the grounds that they closely resembled its three parallel bands and, based on this claim, the EUIPO denied registration to the Belgian company on two occasions (2015 and 2016). It is important to remark that Adidas had not proceeded to register its three lines before the EU until this point.
Once this judicial contest was won, Adidas decided to request in December 2013 the registration of the famous three parallel bands as a community trademark before EUIPO, which gave its consent. However, on this occasion, it was BVBA who opposed the decision based on the denial of their two lines. This opposition led EUIPO to change its mind and cancel Adidas’ registration, arguing that this sign does not have the “distinctive character” required to a trademark.
Subsequently, the decision was appealed to the EGC, based in Luxembourg, who confirmed in its resolution the cancelation decided by EUIPO, considering that Adidas had not been able to demonstrate that the use of the three stripes has distinctive character in the entire European Union to identify the brand. This last decision of the EGC is outstanding since it is contradictory to the decision of the mentioned case of BVBA in 2009, in which the Court did consider that Adidas had managed to demonstrate the notoriety of its design of the three stripes to deny the registration of the two stripes of the Belgian company.
Against this background and the fall of its shares by more than 1% on the German stock market, Adidas still has the option to appeal the decision of the EGC before the Court of Justice of the European Union (CJEU), having only two months of the term. Then, it will be necessary to wait to see if the German company manages to revert this situation or if the Belgian company, BVBA, will hang Adidas with its own rope.