German sportsware giant Adidas is well known for strongly enforcing its three-striped shoe trademark. Adidas puts their foot down on almost any shoe that contains horizontal stripes. It has sued Gucci, Payless Shoes, and Forever 21 in the US over the use of stripes in their products. In the European Union, Adidas is also facing off against Shoe Branding over a two-striped decoration on shoes that Adidas claims doesn’t smell quite right.
The battle over stripes on shoes began in the European Union’s Intellectual Property Office’s Opposition Division, which ruled that Shoe Branding’s two-stripe mark is not sufficiently similar to Adidas’s to confuse consumers. The Second Board of Appeal went further, stating that it did not believe Adidas’s three-striped mark was meant as anything other than a general decoration, and was not intended to denote a connection with the company.
Adidas appealed the unfavorable decisions to the European Union General Court, which reversed the Intellectual Property Office. The Court held that Adidas had a distinctive mark and that Shoe Branding’s two-stripes was likely to confuse consumers.
Shoe Branding appealed that decision to the Court of Justice of the European Union, the EU’s highest court, arguing that the brands and their stripes have coexisted for decades without any confusion, but the Court of Justice disagreed. In February 2016, the Court of Justice concluded that the differences were not robust enough to overcome the similarities in the brands, destroying Shoe Branding’s trademark.
However, Shoe Branding found one last loose thread that it could pull on Adidas. In 2014, in the middle of the vicious trademark battle in the General Court, Shoe Branding filed another proceeding with the Intellectual Property Office to remove Adidas’s trademark registration. Shoe Branding argued that the three-stripe mark amounts to a mere decoration that lacks a secondary meaning or acquired distinctiveness, and the Intellectual Property Office agreed. So did the Second Board of Appeals. That case is set to go in front of the General Court this year. With the General Court’s history of reversing the Intellectual Property Office on issues of Adidas’s three-striped mark, one is left to wonder what the future holds for Adidas.