With its decision of 16 June 2019 (Case T-307/17), the EU General Court ruled on the appeal filed by Adidas AG (“Adidas”) against the decision of the Second Board of Appeal of EUIPO, relating to invalidity proceedings between Shoe Branding Europe BVBA (“SBE”) and Adidas.

In December 2013, the well-known sportswear manufacturer filed an application with EUIPO and obtained the registration of the EU trademark here below for clothing, footwear and headgear. 

“The mark consists of three parallel equidistant stripes of identical width, applied on the product in any direction”

In December 2014, SBE filed an application for declaration of invalidity of the mark at issue based on lack of distinctive character, which was granted by EUIPO. Against this decision, Adidas filed an appeal, claiming that the mark had acquired distinctive character through use. In 2017, EUIPO dismissed the appeal and declared the mark invalid, on the grounds that the applicant had failed to establish that the mark had acquired distinctive character through its use throughout the European Union.  

Adidas filed an appeal before the EU General Court against the EUIPO decision, claiming that EUIPO had wrongly dismissed numerous items of evidence and had made a wrong assessment in holding that the acquisition of distinctive character had not been established.

The General Court pointed out that the requirement of graphic representation, together with the description of the mark, is intended to define the mark itself, and it is for the trademark applicant to file a graphic representation of the mark corresponding precisely to the subject matter of the protection he wishes to secure. Once a trademark is registered, the proprietor is not entitled to a broader protection than that afforded by the graphic representation.

In the case at issue, the General Court rejected the applicant’s claim that the object of the protection conferred by the mark consisted of the use of three parallel equidistant stripes, irrespective of their length or the way in which they are cut (an argument instrumental to the plea that EUIPO had wrongly dismissed numerous items of evidence). In the General Court’s opinion, this argument was not supported by any concrete evidence: not by the graphic representation of the mark at issue, which shows a sign characterised by a ratio of around 5 to 1 between the total height and width and its rectangular shape, the three stripes being cut at a right angle; nor by the description of the mark, which does not refer to stripes of variable length or stripes cut at a slanted angle.   

With regard to the documents submitted by the applicant as alleged evidence of the use of the mark (in particular, images from catalogues or other promotional material), the General Court confirmed that the concept of the “use of a trademark”, within the meaning of Article 7(3) and Article 52(2) of Regulation no. 207/2009, must be interpreted as “referring not only to use of the mark in the form in which it was submitted for registration and, where relevant, registered, but also to the use of the trademark in forms which differ from that form solely by insignificant variations and that are able, therefore, to be regarded as broadly equivalent to that form”. At the same time, upholding the observations of EUIPO, the Court pointed out that, given the extremely simple character of the mark at issue, even minor alterations may affect one of its essential characteristics and the perception of it by the relevant public.

In particular, the General Court observed that the mark at issue is a figurative mark containing no word elements and presenting very few characteristics, except the use of three black stripes against a white background. Therefore, the General Court stated that “the act of reversing the colour scheme, even if a sharp contrast between the three stripes and the background is preserved, cannot be described as an insignificant variation as compared to the registered form of the mark at issue”.

In the General Court’s opinion, the proof of use submitted by Adidas, consisting of images bearing a sign that consists of three parallel stripes in a light colour, thick, short and cut at a slanted angle, must be rejected. With regard to the images as a whole, the General Court stated that, although some of the images correspond to the mark at issue and are thus capable of proving use of that mark, they don’t provide any indication regarding the scale and duration of that use or the impact of that use on the perception of the mark by the relevant public. Consequently, the General Court continued, those images “do not show that the use was sufficient in order for a significant proportion of the relevant public to identify, based on the mark at issue, a product as originating from a particular undertaking”.

Finally, regarding the affidavit produced by the applicant containing figures concerning the turnover of the undertaking, the amount of marketing and advertising costs incurred, as well as information regarding the market shares of the “Adidas brand” in some Member States and the sponsorship activities in connection with sporting events and competitions, the General Court observed that the figures concern the entire business of the undertaking, all of the goods and all of the marks taken together, and therefore do not establish that the specific mark at issue has been used and has acquired distinctive character following that use.  

Based on the above, the General Court concluded that the various items of evidence produced by the applicant, even taken as a whole, did not prove the use of the mark throughout the territory of the European Union and were not sufficient, in any event, to demonstrate that by virtue of that use the mark has come, in the whole of that territory, to identify the goods for which it was registered and thus to distinguish those goods from those of other undertakings.

The General Court therefore dismissed the appeal and ordered Adidas to pay the costs.