When Your Trademark is not distinctive


It is a given that intellectual property protects creativity especially trademark. Of course, it does so rather strictly and without bias of any form. We have heard cases of minnows trumping bigger fries in IP disputes like Already LLC defeating Nike in a dispute over the patterns on Nike Airforce 1 Shoes. Last year, Nestlé also lost a long-running court battle to trademark the four-finger design of its chocolate bar KitKat.

Three weeks ago, the IP world recorded another landmark decision. In 2014, the Belgian Company Shoe Branding Europe brought the original case prior to this decision. The company owns a brand called Patrick. Patrick’s products are branded with two stripes that slope in the opposite direction to those of Adidas. That year, the EU Intellectual property authorities approved of Adidas’ three stripes trademark. However, the Belgium-based company Shoe Branding Europe challenged it, saying the trademark was not distinctive enough. Two years later, the EU Intellectual Property Office annulled Adidas’ trademark, siding with the Belgian company’s complaint.

Two weeks ago, the General Court of the European Union in Luxembourg therefore ruled that Adidas cannot hold a trade mark for the use of three stripes “in any direction”.

Quite a long fight, yeah?

This ruling goes into one of the most basic features of trademark, that it must be distinctive. Here, the mark was “devoid of any distinctive character” to qualify as a trade mark.

The opinion of the court..

According to the court, “The mark is not a pattern mark composed of a series of regularly repetitive elements but an ordinary figurative mark.” It stated further that considering that the mark itself is not distinctive enough , it must have “acquired distinctive character through use throughout the entire territory of the European Union and its 28 member state countries” to convince the court to recognize it as a viable trademark operative through Europe.

However, the ruling applies only to Adidas’ monopoly of an ordinary three-stripe mark which is not distinctive. As such, the ruling does not impact on the broad scope of protection that Adidas has on its well-known three-stripe mark in various other forms in Europe which are distinctive in pattern. For instance, Adidas adopts a logo typically displayed as three black lines of equal width. The three black lines slant from left to right against a black background and this remains protected in all EU states.

So, you want to register your trademark? Ask yourself how distinctive is your mark? You definitely do not want the court to do the asking several years after the mark has become a great asset to your business.
The decision of the Court at Luxembourg can still give room to an appeal at the European Court of Justice, the EU’s top court. However, Adidas only has two months to do so.

Olanrewaju Moses,
For IP Research Team.

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