Stripes on a toad does not make it a tiger

Skärmavbild 2015-09-24 kl. 13.02.53

Skärmavbild 2015-09-24 kl. 13.13.04

LOCATION: LUXEMBOURG

A game of thrones between the two- striped and three- striped

“If you paint stripes on a toad, he does not become a tiger”. That is a quote by the famous author of A Song of Ice and Fire, George R.R Martin (The book series which Game of Thrones is based upon). A quote which can be claimed to be quite appropriate since today´s post is about stripes. And – the battle in court between two shoe manufacturers of the rightful claim to the iron throne.

The General Court made a judgement the 21st of May 2015 in the case of Adidas AG v. Shoe Branding Europe. By this judgement, they annulled the decision from 2013 where the Second Board of Appeal of the OHIM (the Office of Harmonization in the Internal Market) had claimed that the three- striped registered Adidas trademark did not prohibit the brand Shoe Branding Europe from registering a trademark with two stripes.

The Board of Appeal had stated, in 2013, that the marks were visually dissimilar and that no likelihood of confusion among consumers allegedly could occur. Therefore, they said that the two- striped Shoe Branding Europe would not take unfair advantage of the three- striped Adidas trademark. -> Shoe Branding Europe could, according to OHIM, register a two- stripe trademark without this constituting a trademark infringement on Adidas.

But – how come the General Court found these assessments incorrect, which instead resulted in the opposite; a victory for the Adidas trademark by this 2015 judgement? First, it is possible to register elements such as stripes as a part of one´s trademark. This results in the fact that other brand´s use of these elements, (read: in the same sector OR in different sectors if the brands are visually similar) could constitute a trademark infringement.

In this case it seemed like the Board of Appeal did not dare to stretch the boundaries of the protection for the Adidas trademark by only acknowledging protection of three- striped shoes. Instead, that can be said to be exactly what the General Court dared to do.

The General Court said that the elements were similar because of the parallel sloping stripes, of the same width, contrasting with the base color of the shoe & the fact that the stripes were placed on the outside of the shoes (See attached pictures below). Then, it did not matter that Shoe Branding Europe only used two stripes on their shoes, with another design – the trademark was still considered as being too similar to Adidas (see attached photos).

Therefore, the General Court claimed that the Shoe Branding Europe´s use of this trademark element constituted a trademark infringement on Adidas, which resulted in that they had to pay the court costs and to stop manufacture these two- striped shoes.

If you read a certain previous article on thefashionlegal, you might recognize some of these reasonings. Because this case constitutes a similar judgement to another recent EU- case of Christian Louboutin v. Van Haren(link here!). After these two recent judgements, it is of my advice that shoe manufacturers should be careful with creating shoes with such kind of designs. Or rather, designers in general should take precautions when designing clothes or accessories with similar features to already registered trademarks.

This is of relevance because trademark elements are given quite high levels of intellectual property protection in the European Union these days. On the other hand, these cases open up the possibility for actors in the fashion sector to register their specific designs as a part of their own trademark too, which eventually will result in a more competitive position for the company. Because, the more of your business you are able to control through the law – the more profit. You will, through registering e.g trademark elements, be able to create a sort of legal monopoly where you are the only designer who can use that certain design commercially.

Because when there is no competition – you will own the market.

And so, in this story, the tiger & the rightful holder of the iron throne was claimed to be Adidas AG.

Suddenly, the George R.R Martin quote “if you paint stripes on a toad, he does not become a tiger”, got a completely new meaning.

Skärmavbild 2015-08-17 kl. 17.04.01

Skärmavbild 2015-08-17 kl. 17.03.48

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