Why did adidas lose its three stripes trademark and what will happen next?

Why was adidas unsuccessful?

Essentially adidas failed because it didn’t produce evidence of its use of the mark throughout all the territories of the European Union, and so failed to establish that the three stripe mark had acquired distinctive character in the whole of the European Union.

What lessons can brands learn from this?

The decision of the General Court mirrors that made quite recently by the European Union Intellectual Property Office (EU IPO) in holding that the McDonalds trademark for Big Mac is invalid. If a trademark lacks distinction in itself (nothing unusual, different or peculiar in either the name or logo, as the case may be), and the trademark owner is seeking to argue that the mark has become distinctive [of the brand] through use then it must be able to produce evidence of that use across the relevant territories. For a community trademark that means the whole of the European Union.

Rather than have to rely on distinctiveness through use, the better approach would be to adopt a trademark (name and/or logo) that is obviously distinctive. I would suggest that the adidas three stripe triangle mark is distinctive and so unlike the bare three stripe logo, it is not susceptible to a non-validity challenge.

Invalidity – What next?

Following a declaration that a trademark is invalid the registration is lost, so the brand no longer has an enforceable trademark. That should not prove too problematic for adidas which has an extensive trademark portfolio, likewise McDonalds, but if the invalid mark was the brand’s sole or principle trademark then losing it would leave a business at risk of brand dilution and at the mercy of imitators. Avoiding validity proceedings is important as they can be expensive and result in the loss of a registered trademark.

A registered trademark is important to a business as it:

• protects the brand – acting as a shield against copycats
• creates brand recognition – making it easy for customers to find the business
• enables effective utilisation of the internet – promoting increased traffic on websites and across social media, and
• is a valuable asset – intellectual property rights not only enhance the value of the business but have a value in themselves that can be assigned and transferred for money.

What does a successful trademark look like?

The key to a successful trademark registration is to ensure that the mark is inherently distinctive. Avoid names or logos that are similar to an existing trademark or are generic in sound or appearance. Avoid using a mark that is over simplistic or otherwise devoid of individual character.

When faced with a validity challenge for lack of distinctiveness ensure, before embarking on costly proceedings, that you have evidence of use across the relevant territory. You can learn more about this in our recent blog on the LEGO trademark.