On 19 June 2019 the General Court (Ninth Chamber, extended composition) handed down its judgment in Case T-307/17 adidas AG vs EUIPO/Shoe Branding Europe BVBA (intervener). Tobias Malte Müller, Chair of the MARQUES Amicus Curiae Team, discusses the key points.

The Adidas three-stripe mark

This case concerned the validity of one of Adidas’s three-stripes trade marks registered as an EUTM in 2014. Shoe Branding Europe filed an application to declare the mark invalid. The EUIPO Cancellation Division granted the application and held Adidas's EUTM invalid due to lack of distinctive character, both inherent and acquired through use. The EUIPO Board of Appeal rejected Adidas’s appeal and, in particular, Adidas’s plea of acquired distinctiveness. Adidas then brought the matter before the General Court.

MARQUES supported Adidas in this case, which is of utmost importance of its members and all brand owners. The MARQUES Amicus Curiae Team submitted its brief on 22 January 2018 and pleaded in favour of a liberal interpretation of Article 7(3) of Regulation No. 207/2009 and of the evidence to be submitted in support of this provision.

MARQUES advocated the position, following which Article 7(3) does not only refer to use of the mark in the form in which it was submitted for registration, but also to the use of the trade mark in forms which differ from that form solely by insignificant variations and that are, therefore, able to be regarded as broadly equivalent to that form (“law of permissible variations”, paragraph 59). MARQUES further emphasised that a narrow interpretation of Article 7(3) would inevitably raise the bar for proving acquired distinctiveness so as to become extremely costly and burdensome for trade mark owners and therefore unachievable in practice, especially for smaller and mid-sized companies.

However, the General Court, having regard to the alleged simplicity of the mark at issue, considered the evidence showing a reversed colour scheme to be a significant variation of the registered form, even if the same sharp contrast between the three stripes and the background was preserved in both versions. Therefore, and in contrast to MARQUES’ position, the General Court adopted a restrictive approach in holding that the part of the evidence which did not show the mark as registered, but another sign – in particular a reversed colour scheme – was to be dismissed (paragraph 77). It concluded that various pieces of evidence adduced by Adidas did not prove that the mark at issue had acquired, throughout the territory of the European Union, distinctive character following the use which had been made of it.

Nevertheless, the General Court pointed out that in order to successfully claim distinctive character acquired through use, it would be unreasonable to require proof of such acquisition for each individual Member State (paragraph 145). This view is based on the Court of Justice’s judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services (Case C‑84/17 P, C‑85/17 P et C‑95/17), where MARQUES also intervened and supported exactly the position that no provision of Regulation No 207/2009 requires that the acquisition of distinctive character through use be established by separate evidence in each individual Member State (paragraph 146).

Tobias is a partner of TALIENS in Munich and Chair of the MARQUES Amicus Curiae Team