On March 1, 2018, the European Court of Justice delivered its verdict in the long-running case over the trademark of Adidas three parallel stripes on footwear.

The ECJ ruled in favour of Adidas, upholding the earlier decisions of the European Union Intellectual Property Office that two trademarks filed by Belgian footwear company Shoe Branding Europe infringed on Adidas’ globally-renowned “three stripes” mark.

“Today’s decisions by the General Court of the EU are unsurprising,” says Jacqueline Pang, a trademark attorney at Mewburn Ellis in London. “The Boards of Appeal had simply adopted the General Court’s analysis in an earlier judgment between the same parties and taken it to its logical conclusion. That General Court decision had also subsequently been confirmed by the Court of Justice of the EU, the EU’s highest court. Ultimately, it was the significant reputation of Adidas’s three stripes on footwear that won the day.”

The decision will make it much harder for third parties to get away with adopting a mark with only minor variations to that of Adidas’s three stripes, such as adding or removing a stripe or changing its direction, Pang says. “Shoe Branding Europe partly shot itself in the foot. Its promotion campaign in 2007 in Spain and Portugal used the slogan ‘two stripes are enough,’ which was felt to be a ‘concrete element’ in finding that it had taken unfair advantage of Adidas’s mark and also in proving that Shoe Branding’s use of its mark was not always in good faith.”

“The decision also proves that although it may be initially difficult to obtain protection for non-traditional marks, they can be well worth the effort as potentially effective and powerful weapons against third parties,” Pang adds. “However, brands should watch this space carefully. Adidas may have won the battle but the war continues. In an unrelated case last year, Shoe Branding successfully cancelled one of Adidas’s EU trademark registrations for three stripes despite copious evidence purportedly showing use of the mark and this is under appeal at the General Court. The saga continues.”

As far as the case and its history, it goes way back to 2009 and 2011, when Belgian company Shoe Branding Europe filed an application with the EUIPO for registration of two EU trademarks, one for footwear and the other for safety footwear. This was opposed by retail giant Adidas on the grounds that those trademarks relied, inter alia, on one of its own marks.

In 2015 and 2016, the EUIPO allowed Adidas’ oppositions and refused registration of the two marks applied for by Shoe Branding Europe.

Given the degree of similarity between the marks at issue plus the reputation of Adidas’ earlier mark, the ECJ has upheld the decision of the EUIPO and ruled that there is a likelihood that members of the public might confuse the marks. As a result, the Court has ruled the use of the marks applied for could take unfair advantage of the reputation of Adidas’ mark and that such use would be unjustified by due cause.

The General Court has also dismissed the actions brought by Shoe Branding Europe against EUIPO’s two decisions and thereby confirmed the latter.