This case concerns a refusal of a EUTM application on grounds that the mark applied for, consisting of 5 parallel stripes on the side of a sports shoe in class 25, was devoid of distinctive character. The General Court agreed with the Board of Appeal’s analysis that the stripes on the shoe were decorative and mere embellishment. The General Court concluded that it is general practice for sports shoe manufactures to place simple patterns on the side of shoes, and noted that the lines on the K-Swiss shoes extend to the full height of the shoe and the length of the lines is naturally determined by the size and shapes of the shoe. K-Swiss argued as trade marks indicating origin on the side of sport shoes is commonplace in the market, that customers will pay particular attention to the marks and will naturally view them as trade marks. The General Court found that K-Swiss had not adduced enough relevant evidence to support this claim. K-Swiss also argued that Art 76(1) of Regulation 207/2009 requires OHIM to supplement the evidence provided by the applicant, which it had not done. The General Court rejected this argument, stating it is for the applicant to provide specific and substantial information to show that the mark they applied for has intrinsic distinctive character.

Two months after the K-Swiss decision, in February 2016 the CJEU decision in Shoe Branding Europe BVBA v Adidas and OHIM [Case C‑396/15 P] was published. The case concerned an application by Shoe Branding to register an EU trade mark for sport shoes consisting of two parallel stripes. Adidas opposed Shoes Branding’s application primarily on the basis of similarity to their existing EU trade mark (EUTM 3517646), consisting of three parallel stipes. Adidas’ mark, applied for in 2003, was registered in 2006 by OHIM without Adidas providing evidence of acquired distinctiveness.


Adidas' EU Trademark

Shoe Branding

Shoe Branding's Application

In Adidas, the OHIM Board of Appeal dismissed the opposition, finding Adidas’ three stripe mark was commonplace, and as such, could only enjoy protection against identical or virtually identical reproductions. The Board of Appeal held the differences in the positioning, angle and number of stripes was enough to dispel any likelihood of confusion. However, Adidas appealed the decision to the General Court which overruled OHIM. The General Court found the difference in the length of the stripes and their angle resulting from the different positioning on the shoes was only a minor difference which would not be noticed by a consumer with an average degree of attention. The GC said that such differences would not influence the average consumer’s overall impression of the marks, taking into account the presence of wide sloping stripes present on both shoes. Shoe Branding appealed the decision to the CJEU who dismissed Shoe Branding’s appeal and confirmed the decision of the General Court. The CJEU said the difference between the number of stripes on the shoes was not substantial enough to dispel the similarities arising from the configuration of the stripes and their positioning on the side of the shoes.

Interestingly, although the OHIM Board of Appeal did not seem to be impressed by Adidas’ trade mark, saying it should only be used to protect identical or near identical copies, the General Court and CJEU were happy to maintain the rights arising from the Adidas trade mark registration against Shoe Branding’s application, preventing Shoe Branding getting a registration. Although the Adidas case concerned an opposition to a new registration on the basis of Adidas’ existing mark and the K-Swiss case concerned the registration of a new mark, the inconsistency of principles between the Adidas oppositions of Shoe Branding’s application and the K-Swiss application are obvious. The Adidas mark consists of three parallel stripes and the K-Swiss application was for five very similar looking parallel stripes in the same position on a shoe, yet in the Adidas case the rights in the three stripe mark, which was registered without evidence of distinctiveness, were maintained against two stripes in a different direction and in the K-Swiss case the registration of five stripes was refused. However, if Adidas can get a registration for three stripes without evidence of distinctiveness and can stop two stripes in a different direction then it should be able to stop five in the same direction. As such, had they opposed K-Swiss it would not be on the register. No doubt Adidas did not do so as at the time it had failed to stop two stripes in OHIM and by the time it was successful in overturning the ruling in the General Court and the CJEU it would have been too late to oppose K-Swiss. Strange route to the right result? Perhaps!

Link to Judgment

Judgment Date: 04 DECEMBER 2015