Once again, the Spanish courts have declared that the use of several parallel stripes on sports clothing and trainers infringes Adidas's trademark rights in its three-stripe marks.The April 11 2012 ruling (a definitive judgment) declared that the use of four parallel stripes on trainers infringed the Adidas three-stripe trademark and was also an act of unfair competition.
In recent years Adidas has requested and obtained from the Spanish courts several judgments declaring that the manufacture, import and sale of trainers and sports clothing with two and/or four parallel stripes infringed its well-known trademarks.(1)
In this latest case, the court established that the import by D Pietro Di Nocera of 28,996 pairs of shoes on which four parallel stripes were reproduced constituted an infringement of the well-known three-stripe trademarks owned by Adidas AG and Adidas International Marketing BV. It also held that an act of unfair competition was committed against the Spanish distributor Adidas España SA. As well as including the offending four parallel stripes, various Adidas models that Adidas España commercialised in the Spanish market were also imitated. The court confirmed that this constituted an act of confusion under Article 6 of the Unfair Competition Act and the exploitation of a third party's reputation under Article 12.2.
The court confirmed that Article 34.2 of the Trademarks Act applied in this case. The well-known character of the three-stripe marks and similarities in the appearance of the trainers and in the relevant distribution channels allowed Adidas to prohibit the use of signs which imply a risk of confusion in the public.
The defendant was ordered to pay compensation to the trademark owners, Adidas and Adidas International Marketing, for the damages caused. The criterion of a hypothetical royalty (Article 43.2(b) of the Trademarks Act) was used to establish the amount to be paid, based on the amount that the trademark owners would have received as remuneration if they had granted a licence for the sale of trainers in which their trademarks had been reproduced.
The court considered that the sum of €855,568.56 arrived at by the expert was consistent in light of the documentation that the expert had verified.
The court also declared that the import of infringing products constituted an act of unfair competition because it had negatively affected the position of Adidas España as the Spanish distributor of Adidas trainers.
The court justified the cumulative sentence for the acts of unfair competition, applying the principle of relative complementarity with the trademark legislation. It took into account that Adidas España could not assert trademark protection as it owned none of the infringed three-stripe trademarks, but was nonetheless affected by the defendant's illicit procedure.
(1) See the Madrid Commercial Court 3's December 29 2006 judgment, confirmed by the Madrid Court of Appeal on September 26 2008, for the use of four parallel stripes in trainers; the Zaragoza Commercial Court 1 judgment, July 31 2009, confirmed by the Zaragoza Court of Appeal November 27 2009, for the use of two and four parallel stripes in trainers; and the Valencia Commercial Court3 judgment, July 29 2011, for the sale of sports clothing with two and four parallel stripes, appealed by the infringer and pending a decision by the Valencia Court of Appeal.
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