The Spanish courts have confirmed that using two and four parallel stripes in sports clothes and trainers infringes Adidas's three-stripe trademark, not only because it takes unfair advantage of the reputation of the well-known trademark, but also due to a likelihood of confusion.
In this regard, on July 29 2011 Valencia Commercial Court No 3 rendered a judgment (served in September 2011) by which it considered that the import and marketing of sports clothes (ie, tracksuits, t-shirts and shorts) bearing two parallel stripes infringed the well-known Adidas three-stripe mark.
For many years, Adidas has filed lawsuits in Spain alleging the infringement of, among other things, its well-known trademark consisting of three parallel stripes on sports clothing and trainers through the use of either two parallel stripes or four parallel stripes on clothing or trainers.
The courts have issued several decisions upholding Adidas's claims against manufacturers and sellers of trainers bearing two and/or four parallel stripes – for example, Adidas v Jin Matteo and Adidas v Almacenes Kaymo SA.
In Adidas v Jin Matteo the court considered that the use of four parallel stripes on trainers was an infringement of Adidas's trademarks (Madrid Commercial Court No 3 (December 29 2006), confirmed by the Madrid Court of Appeal (September 26 2008)). The damages suffered by Adidas were valued at more than €1.8 million.
In Adidas v Almacenes Kaymo SA Zaragoza Commercial Court No 1 rendered a judgment (July 31 2009, confirmed by the Zaragoza Court of Appeal (November 27 2009)) ascertaining that Adidas's well-known trademarks had been infringed by the use of two and four stripes on the sides of the trainers at issue. The defendant was sentenced to pay Adidas more than €1.6 million.
The courts have thus consistently held that trainers bearing two and four parallel stripes infringe the well-known Adidas three-stripe trademark. However, unlike in other European countries, until recently the Spanish courts had not had the opportunity to render a decision on whether the use of two or four parallel stripes in sports clothing infringed the Adidas three-stripe mark. The first judgment on this issue was issued by Alicante Community Trademark Court No 1 on April 27 2011. In this case it was considered that the marketing of tracksuits bearing two parallel stripes on the sleeves and trousers infringed Adidas's trademarks due to both a likelihood of confusion (Article 9.1b of the Community Trademark Regulation) and an unfair advantage gained from the reputation of a well-known trademark (Article 9.1c).
The judgment issued by Valencia Commercial Court No 3 on July 29 2011 confirmed that the use of two stripes on sports clothing infringes the Adidas three-stripe mark. In that case, the court examined the import and marketing of sports clothing bearing two parallel stripes and concluded that the items infringed Adidas's trademarks. In regard to damages, the infringer, Patrick, was ordered to indemnify Adidas for its lost profits, valued at more than €500,000. Patrick has appealed this judgment.
For further information on this topic please contact Miguel Gil at Grau & Angulo by telephone (+34 91 353 3677), fax (+34 91 350 2664) or email ([email protected]).