The Court of Justice of the European Union, the European Union’s highest court, has recently found that a trademark consisting of two parallel stripes on a shoe was confusing with the famous Adidas three stripe trademark.
Shoe Branding Europe BVBA (“Shoe Branding”) filed an application for a European Union trademark for a mark consisting of two parallel stripes on the side of the shoe. The mark was categorized as a position mark and is shown below:
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Adidas AG (“Adidas”) opposed the application on the basis that the applied-for trademark was confusing with a number of trademark registrations owned by it, including the following trademark:
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Initially the opposition was rejected by the European Union Intellectual Property Office (“EUIPO”).
The Appeal Board
Adidas appealed to the Board of Appeal EUIPO who also dismissed the appeal. The Board said that the differences in the number of stripes and their respective positions on the shoe were sufficient to support a finding that the trademarks in issue were dissimilar. Even taking into account the reputation of the Adidas registrations, the differences were sufficient to preclude any likelihood of confusion in the mind of a reasonably well informed and reasonably observant member of the public. The Board arrived at this conclusion even though the goods were identical and independently of the fact that the Adidas marks as a result of their extensive use have a fairly high degree of distinctiveness.
The General Court
Adidas appealed from this decision to the General Court of the European Union. The General Court said that a global assessment of the likelihood of confusion in relation to the design marks in issue must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods in question plays a decisive role on the global assessment of the likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyze its various details.
The General Court found that difference between two and three stripes placed on a shoe was not sufficient to affect the similarities arising from the consideration of the marks in issue and from their position on the side of the shoe. As a result, the appeal was allowed and the decision of the Board of Appeal set aside.
The Court of Justice of the European Union
Shoe Branding then appealed from this decision to the Court of Justice. The court agreed that the assessment in the case must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. They also agreed that minor difference between the marks would not be noticed by consumers having an average level of attention and would not influence the overall impression of the respective marks. As a result the appeal was dismissed.
The Canadian Position
In July of 2015 we discussed a decision of the Federal Court where there was an issue between Adidas and the owner of a trademark application for a trademark that featured a single stripe. In that case the judge considered the matter from the point of view of an average consumer as a matter of first impression. Both the Opposition Board and the trial judge found there was a sufficient difference between the respective marks to find no likelihood of confusion.
Notwithstanding this result, it is clear that it is a matter of law, in Canada, the trademarks in issue must be considered as a whole as they are perceived by a mythical consumer, who normally makes up the market. It is not a correct approach to put the trademarks side by side or to break them into their components and make a careful comparison in order to observe similarities and differences.
It appears that the approach to the issue of confusion is relatively consistent in both Canada and the European Union. However, the fact remains that trademark cases are driven by their facts and the application of the relevant principles can be problematic.