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In a recently published decision, the Higher Regional Court of Munich had to rule on the scope of protection attributed to a well-known position mark. The case is part of the long-time rivalries between German sports gear manufacturers Adidas and Puma. This time, the disputes centered on the famous three parallel stripes of Adidas. Adidas sued its rival due to an alleged infringement of a EU position trade mark featuring the three stripes on a sports shoe, as shown above right.

The description of the mark reads as follows: “The trade mark consists of three parallel equally spaced stripes applied to footwear, the stripes positioned on the footwear upper in the area between the laces and the sole”.

In the opinion of Adidas, Puma was infringing its EU trade mark by selling sport shoes (as shown above left) which also showed three stripes even if, contrary to Adidas’ designation, with a different length and space in between the stripes and with a different degree of inclination. Moreover, Puma’s stripes were clearly curved and gradually narrowing towards the back end of the shoe.

In the light of these differences, at first instance the Regional Court of Munich dismissed the claims raised by Adidas. In the appeal before the Higher Regional Court however, Adidas was successful. The Court found a likelihood of confusion between the EU position trade mark and the pattern used by Puma, emphasizing that the extraordinary reputation of Adidas’ mark leads to a very high degree of distinctiveness and, accordingly, to a very broad scope of protection. In this context, the Court did not even request any proof from Adidas to corroborate the reputation of the three stripes mark, such as sales figures, market share or advertising expenditure. It considered it an obvious fact known to the Court that for decades national and international sport celebrities had been wearing sports clothes and footwear featuring the three stripes. The Court also stated that the mark was known to almost everybody from its high presence in sports reporting in TV, online and print media as well as its ubiquitous visibility in daily life.

In its decision, the Court pointed to the interdependence of the relevant factors in assessing a likelihood of confusion – the similarity of the products, the distinctiveness of the earlier trade mark and the degree of similarity between the signs. On this basis, the Court held that the rather low degree of similarity of the signs in the present case was outweighed by the identity of the products and, in particular, the extraordinary distinctiveness of the three stripes mark of Adidas. Although the Court did acknowledge the differences in the shape of the two signs, it found a still sufficient low degree of visual similarity asserting that the public does not tend to analyse the details of two marks and to split them up artificially into their components. Hence, the relevant consumers were unlikely to examine the Adidas mark as to the width of the stripes or the inclination angle. Thus, the fact that the stripes on the contested Puma shoes were longer and gradually narrowing towards the heel was not a decisive factor to the Court. On the contrary, the Court considered it to be decisive and sufficient for a certain degree of visual similarity that the position of the three stripes overlapped at least partially, namely in the lower half of the shoe above the sole. This finding of similarity was supported, according to the Court in Munich, by the fact that in case of a well-known trade mark the public generally tends to believe that they recognise the well-known sign also in other designations.

The decision is not yet final. Puma has filed a complaint against the Court’s decision not to allow an appeal to the German Federal Court of Justice. However, the decision shows the enormous scope of protection which can be awarded to a well-known trade mark in Court proceedings. At least in the view of the Higher Regional Court, such a well-known trade mark shall prevail against another sign even if the later sign only bears a very remote degree of similarity with the earlier (position) mark. Should the German Federal Supreme Court of Justice confirm this judgement, this might also have an impact on the way how to assess the risks of launching a new trade mark on the market as new marks will have to keep an even greater distance from very established and famous signs to avoid infringement.

Case – Docket No. 6 U 1576/15