The famous ADIDAS three stripes have already been the subject of a number of important trade mark decisions. These are again the focus of a decision of the French Supreme Court (“Cour de Cassation”) issued on 31 January 2018.

The French entity ADIDAS FRANCE had registered its three stripes emblem as a figurative trade mark in France, on 29 November 1988. The German entity ADIDAS AG was also the owner of a European Union trade mark filed on 3 November 2003 (above left). This European Union trade mark was described in its application as “three parallel equally spaced stripes applied to a trouser or short, the stripes running along one third or more of the length of the side of the trouser or short”. Both trade marks covered goods in class 25.

A French third party imported into France trousers with two parallel colored stripes of equal width, ending with a large horizontal stripe topped by another horizontal narrow stripe, both of these stripes extending towards the back of the trousers and being followed by the number 974 (above right).

ADIDAS FRANCE and ADIDAS AG brought an action for trade mark infringement against the importer.

The importer filed a counter-claim for the revocation of the French trade mark, effective as from 8 June 1995, on the ground of non-use. It argued that the trade mark had not been genuinely used within a continuous period of five years i.e. between 8 June 1990 and 8 June 1995. At the Paris Court of Appeal, it was decided to revoke the trade mark as it was found that ADIDAS did not provide sufficient evidence of use for this period, most of the evidence provided covering the period after 8 June 1995. However, the Cour de Cassation overruled this decision, stating that, under Article L. 714-5 of the French Intellectual Property Code, a trade mark should not be revoked if, more than three months before the filing of the counter-claim, genuine use of the trade mark has been started or resumed, even though the trade mark had previously not been used during a continuous period of five years.

The Court of Appeal considered that, given the low degree of similarity between the signs, there was no likelihood of confusion between them and, therefore, no infringement. The Cour de Cassation disagreed with this position and stated that the Court of Appeal should have undertaken a global assessment of the likelihood of confusion taking into consideration the reputation of the prior trade mark. Indeed, the reputation of a trade mark is a relevant factor that should be considered in the assessment of the likelihood of confusion since it gives to the trade mark a high degree of distinctiveness.

ADIDAS further argued that its trade mark should be protected as a well-known trade mark under Article 9 c) of the EU Trade Mark Regulation and that the defendant’s use of the sign in question without due cause took unfair advantage of its trade mark and was detrimental to its distinctive character and attractive power. As mentioned by the European Court of Justice in another case involving the same Adidas three stripes, the protection of well-known trade marks “is not conditional on a finding of a degree of similarity between the mark with a reputation and the sign such that there exists a likelihood of confusion between them on the part of the relevant section of the public. It is sufficient for the degree of similarity between the mark with a reputation and the sign to have the effect that the relevant section of the public establishes a link between the sign and the mark” (ECJ, C-408/01, Adidas vs. Fitnessworld Trading, 23 October 2003).

However and according to the Court of Appeal, the low degree of similarity between the signs prevented consumers from making any connection between them. The Cour de Cassation criticized this ruling stating that the Court of Appeal did not take a global assessment of the link that could be established between the signs in the public’s mind. Indeed, the Cour de Cassation pointed out that such assessment should be made taking into account the strength of the trade mark reputation, the degree of distinctiveness as well as the similarity or identity between the products and services.

With this decision, the Cour de Cassation took the opportunity to reaffirm that the reputation of a prior trade mark is particularly relevant in both the assessment of the likelihood of confusion and the assessment of the link that should be established in the public’s mind for the protection of well-known trade marks where, as it was the case here, there is a low degree of similarity between the signs. In doing so, it confirmed the broad protection offered to ADIDAS’ iconic logo.

Case Ref. Cour de Cassation, Com., 31 January 2018, No. 16-10761.