On 18.12.2013, adidas AG filed a European trademark application no. 12442166 in class 25 for the figurative trademark with the following description “the mark consists of three parallel equidistant stripes of identical width, applied on the product in any direction.” and following reproduction:
(further: Adidas trademark).
Trade mark was registered and Shoe Branding Europe BVBA filed an application for declaration of invalidity as the contested trademark has no distinctive character. CD invalidated the Adidas trademark on the ground that the mark at issue was devoid of any distinctive character, both inherent and acquired through use. Adidas filed an appeal and claimed that that mark had acquired distinctive character through use. The appeal was dismissed. BoA stated that the contested trademark was inherently devoid of distinctive character and applicant did not prove that contested trademark acquired distinctive character through use throughout the EU. Adidas filed an appeal.
Adidas argued that as a result of misinterpretation of Adidas trademark and misapplication of the ‘law of permissible variations’, the BoA dismissed number of evidences. Applicant stayed that Adidas trademark is a surface pattern that may be reproduced in different dimensions and proportions depending on the goods on which it is applied. The GC noticed that trademark was registered as figurative trademark what is confirmed by trademark description. Figurative mark is registered in the proportions shown in its graphic representation. Neither graphic representation, nor description of the Adidas trademark proves that it is composed of a series of regularly repetitive elements. Considering the above GC concluded that the Adidas trademark is an ordinary figurative mark.
Adidas argued that the rule that the trade mark may be used in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, shall refer to the acquired distinctiveness. GC shared this point.
Adidas did not argue the extremely simple character of its trademark but raised that BoA wrongly assessed that even a slight variation produce a significant alteration to its the characteristics as registered. The GC did not share applicant argumentation and noticed that simpler the mark, more likely its alternation will affect one of its essential characteristics and the perception of that mark by the relevant public.
As to the inversion of the colour scheme, the GC stayed that because of extreme simplicity of Adidas trademark, the act of reversing the colour scheme, even if a sharp contrast between the three stripes and the background is preserved, cannot be described as an insignificant variation. The same refers to the colours combination.
As to the acquired distinctiveness, GC noticed that number of evidence submitted by applicant did not refer to the Adidas trademark. Moreover, GC found that it was not possible to establish a link between the figures provided by the applicant and Adidas trademark, as well as between those figures and the goods in question. Adidas submitted mark surveys conducted in five MS. GC noticed that the results of the five market surveys can neither be extrapolated to all the MS, nor be completed and supported, in MS which were not covered by those surveys, by the other evidence produced by the applicant. Considering the above, the GC found out that the applicant do not prove use of the mark at issue throughout the territory of the EU. Furthermore provided evidence were not sufficient to demonstrate that, by virtue of that use, the contested trademark has come, in the whole of that territory, to identify the goods for which it was registered, and thus to distinguish those goods from those of other undertakings.
Based on the above the GC dismissed the appeal.