Adidas had originally won the trademark infringement suit against BVBA, but on appeal, EUIPO’s Second Board of Appeal overturned the holding, finding instead that the trademark in question was invalid. In asking for a declaration of invalidity, BVBA had argued that Adidas’s three-stripe trademark lacked distinctiveness and any specific, identifying characteristics that would allow consumers to connect it to a provider of goods or services. In finding for BVBA, the Cancellation Division of EUIPO found that there was “no reason to believe that consumers would assume three straight black vertical lines in ordinary font is primarily intended to denote a connection with a specific provider of clothing, footwear and headgear products” and as such, EUIPO found “no basis on which to conclude that the contested mark is recognized as [Adidas’s] trademark in [a] market of 500 million people.” EUIPO also noted that it was good public policy to disallow Adidas’s mark because allowing Adidas’s registration to stand would unfairly limit the use of straight, vertical or horizontal lines in trademark design.
Similar to U.S. trademark law, EUIPO recognizes the concept of “acquired distinctiveness” in that a trademark may be registrable and enjoy protection once the public has come to associate the mark with a specific brand or source of goods or services. In Adidas’s case, EUIPO found that the Adidas’s three-stripe mark did not meet the requisite requirements, and as such, decided to invalidate the Adidas trademark registration retroactively.
The decision by EUIPO comes as a devastating blow to Adidas, a company that has always aggressively policed its marks. Adidas has been no stranger to trademark disputes, having been involved in disputes with other famous brands such as Tesla, Nike, Marc Jacobs, Puma, Forever 21, and Skechers over the three-stripe marks. In previous comments, Adidas has recognized that its mark is innately difficult to protect because the design is “so simple” that it could “lose its strength” if others were allowed to register marks with remotely similar patterns. As such, while EUIPO’s recent decision qualifies as a major setback for the foot apparel giant, Adidas has no intention of changing its methods of using aggressive litigation and trademark opposition in order to protect its intellectual property holdings.
