The company adidas AG opposed the registration of EU trade mark in the form of two parallel lines

In 2009 and 2011 respectively, the company Shoe Branding Europe from Belgium attempted to register two parallel lines on shoes as EU trademarks for daily and protective footwear. The company adidas AG opposed the described action, claiming rights due to already registered trademarks in the form of three parallel stripes.

European Union Intellectual Property office (EUIPO) refused application for registration of the trade mark filed by Shoe Branding Europe. The Belgian company appealed against the decision of EUIPO to the General Court of the European Union which was faced with a task of reconsidering the legitimacy of registering the trademarks in question.

According to the EU law, the applied trademark is not registered if there is a risk that a new registration would allow deriving unfair benefits from the reputation of a similar trademark already registered.

The General Court of European Union underlined that conflicting trademarks of both companies are not only similar to each other but are also used on goods of the same type. In the Court’s opinion, the trade mark belonging the adidas AG, having an average distinctiveness due to its simple form, is currently enjoying a reputation that is old, durable and world-wide in nature. The above findings led the Court to conclude that there is a link between conflicting trademarks in the mind of the relevant public.

In the opinion of the court, the fact that trademark of the company adidas AG has a high reputation and conflicting trademarks are placed on similar goods, increases the likelihood that Shoe Branding Europe will take unfair advantage of the repute of the trade mark of its competitor.

In the case, the necessary conditions for refusal of registration of a trade mark have been met. Having regard to the considerations above, the General Court of the European Union in its two judgments of 1 March 2018 (n case T-85/16 and T-629/16) dismissed appeals of Shoe Branding Europe and upheld the decisions of EUIPO.

- Judgment of the General Court of the European Union of 1 March 2018 in case T-85/16

- Judgment of the General Court of the European Union of 1 March 2018 in case T-629/16