Important ruling for figurative marks
The General Court (GC) has ruled that adidas's EUTM registration consisting of three stripes applied on a product in any direction is invalid for lack of distinctiveness. The ruling highlights the importance of thinking carefully about how a mark will be used before filing an application.
In particular, the mark as used should respect any contrast between black and white in the registration. Seemingly minor variations in the form of mark used might not count as use of the mark as registered for the purpose of establishing acquired distinctiveness.
adidas had applied to register the figurative mark above as an EUTM for clothing, footwear and headgear in class 25, with the following description: "The mark consists of three parallel equidistant stripes of identical width, applied on the product in any direction." The application was filed as a figurative mark in 2013 and accepted in 2014. In 2013, figurative marks included pattern marks.
Later in 2014, Shoe Branding Europe BVBA applied to invalidate the registration on the ground that the mark lacked distinctive character pursuant to what is now Article 7(1)(b) of Regulation 2017/1001. By the time the case reached the Board of Appeal, the question of inherent distinctiveness had fallen away and the case was limited to whether the mark had acquired distinctiveness through use.
adidas had submitted 12,000 pages of evidence of use. However, much of the evidence showed use of the mark as white/light stripes on a black/dark background – the reverse of that registered.
It also showed stripes with different length to width dimensions and cuts to those depicted in the registration. Both the Cancellation Division and the Board of Appeal held that there was insufficient evidence of acquired distinctiveness of the mark as registered and declared the registration invalid.
- Pattern or figurative mark: adidas's argument that its mark is a pattern mark – the dimensions and proportions of which could vary depending on the goods to which the mark is applied – was rejected. There was nothing in adidas's application which suggested the mark is a pattern mark. The mark is a figurative mark and such marks are, in principle, registered in the proportions shown in their graphic representations. However, this was all irrelevant as the Board of Appeal had not discounted any evidence of use on the basis of the relative dimensions of the stripes forming the mark.
- Permissible variations: adidas argued that the concept of 'use' of a mark for the purpose of establishing acquired distinctiveness must be interpreted in the same way as the concept of 'genuine use' of a mark. If this were accepted then use of the mark in a form which does not alter the distinctive character of the mark as registered (so-called permissible variations) could be taken into account. The GC agreed that these concepts of use are analogous. However, it then went on to apply the test of permissible variations quite narrowly in the present case. This might be because of the nature of adidas's mark. The GC said that, where a mark is extremely simple, even a slight difference in the form used could lead to a significant alteration to the characteristics of the mark as registered. The simpler the mark, the less likely it is to have a distinctive character and the more likely it is that an alteration to the mark will affect one of its essential characteristics.
- Reversal of colour scheme: The GC held that 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 Board of Appeal was therefore right only to take into account evidence showing use of the mark as three dark stripes on a lighter background. This is consistent with the EUIPO's Common Practice of the Scope of Protection of Black and White Marks which provides that (for showing genuine use of a mark) the contrast of shades should be respected.
- Slope and cut: Some of adidas's evidence showed stripes with different length to width dimensions and cuts to those depicted in the registration. Given that all such evidence showed stripes with a reversed colour scheme, it could be ignored anyway. However, the GC commented that the simultaneous alteration to the thickness and length of the stripes and the way those stripes are cut significantly affects several characteristics of the mark as registered.
- Evidence of acquired distinctiveness: The vast majority of the evidence produced by adidas did not relate to the mark as registered but to other signs which differed from that mark significantly (lighter stripes on a darker background). Furthermore, adidas had failed to identify which images in the evidence would establish use of the mark in its registered form or forms broadly equivalent. Participants in some of the surveys conducted by adidas had been asked whether they had already encountered the mark in question in relation to sportswear or sports equipment which may have influenced the results. In any event, simply providing figures relating to turnover and marketing and advertising expenses does not establish that the results of a survey in one market can be extrapolated to another market. It is necessary to show that those markets are comparable.
- Careful thought should be given at the application stage to how a mark might be used. The mark as used should respect any contrast between black and white in the registration. If necessary, the reverse colour scheme should also be registered.
- The relative dimensions and other characteristics of the mark as used (or proposed to be used) should also be taken into consideration at the application stage.
- Seemingly minor variations in the form of mark used might not count as use of the mark as registered for the purpose of establishing acquired distinctiveness. This is particularly so if the mark is relatively simple.
- Evidence of acquired distinctiveness should relate to the mark as registered or permissible variations. Core evidence showing use of the mark as registered should be clearly identified. If evidence is to be extrapolated from one market to another, the applicant must demonstrate that those markets are comparable.
Case Ref: T-307/17