The registration of Adidas’ three black parallel stripes as an EU trademark is invalid, the General Court of the EU has recently affirmed. This is so because Adidas failed to prove that the mark has acquired distinctive character due to the use which has been made of it following its registration.

EU law provides for certain grounds on which the EU’s Intellectual Property Office (EUIPO) will refuse the registration of an EU trademark. One of these grounds relates specifically to the fact that the trademark in question is devoid of any distinctive character.

The ‘distinctive character’ of a trademark means that the mark in question serves to identify the product or service in respect of which registration is applied for, as originating from a particular undertaking, and hence distinguishes the product from the goods or services of other undertakings. Any person can seek to invalidate the registration of a registered EU trademark belonging to another on lack of distinctiveness. However, the law also provides for a safeguard in this regard, so that, even though at the time of registration the trademark in question was devoid of any distinctive character, the registration will not be declared invalid if the proprietor of the mark can prove that, by virtue of the use which has been made of it, the trademark has acquired a distinctive character in relation to the goods or services for which it is registered.

In 2014, the EUIPO registered, in favour of Adidas, three black parallel equidistant stripes of identical width applied in any direction as an EU trademark for clothing, footwear and headgear. In 2016, following an application for declaration of invalidity filed by a Belgian undertaking, the EUIPO annulled the registration of the mark belonging to Adidas, on the ground that it was devoid of any distinctive character, both inherent and acquired through use. According to the EUIPO, the mark should not have been registered and furthermore, Adidas had failed to establish that the mark in question had acquired distinctive character through use throughout EU territory. 

Adidas appealed against the EUIPO’s decision to the General Court and the latter confirmed the Office’s decision. 

The court observed that the mark in question is not a pattern mark composed of a series of regularly repetitive elements but an ordinary figurative mark with no distinctive character. Adidas brought, in its defence, evidence of use of the contested signs, but where the colour scheme was reversed, that is, white stripes against black background. The General Court disregarded such evidence since such use did not respect the other essential characteristics of the mark as registered, such as, its colour scheme, that is, black stripes against white background. 

The court also confirmed the EUIPO’s findings to the effect that Adidas had failed to prove that the mark in question had been used throughout the territory of the EU and that it had acquired, in the whole of that territory, distinctive character due to such use. The Court noted that the evidence produced by Adidas which could be considered as relevant related to merely five member states and not to the entire EU territory.  The most salient scope of a trademark is that it serves to distinguish the goods of one undertaking from those of another. The importance of registering trademarks can therefore never be emphasised enough. Nonetheless, as this case goes to prove, the rights enjoyed by the proprietor of a registered mark are not inviolable and it is essential that any undertaking which seeks to register a mark, be it nationally or as a European mark, ensures that the said mark fulfils all the relevant legal criteria for registration.

Mariosa Vella Cardona M’Jur, LL.D., is a freelance legal consultant specialising in European law, competition law, consumer law and intellectual property law. She is also a visiting examiner at the University of Malta.

mariosa@vellacardona.com