Opinion: How can brands legally protect IP rights in the wake of Adidas three stripes' ruling?

A recent decision of the EU General Court upholding the revocation of Adidas's three-stripe trademark serves as a stark reminder that even the monopoly rights of the big brands can be successfully challenged, particularly where such brands cannot provide adequate evidence of the distinctiveness of their marks.

In 2016, Shoe Branding Europe BVBA, a Belgian organisation, applied to the EU Intellectual Property Office (EUIPO) to invalidate an EU trademark registered in favour of Adidas in 2014. The mark essentially consists of three black stripes on a white background, a key feature of one of Adidas's most iconic logos.

The application was granted and the registration of the trademark was annulled on the basis that it was devoid of any distinctive character, an essential characteristic of any registered trademark. Adidas understandably appealed this decision to the EU General Court arguing, among other things, that the mark had acquired distinctiveness by the use which had been made of it within the EU.

Although Adidas was able to provide a wealth of evidence in an attempt to support its argument, the court refused to consider a large proportion of such evidence on the basis that it was not relevant or specific to the particular mark in question. For example, the court disregarded examples of use of a sign where the colour scheme had been reversed (i.e. white stripes on a black background as opposed to black stripes on a white background).

The evidence provided by Adidas to demonstrate that the mark is used across the EU was also lacking. As an EU registered trademark, it must be shown that the mark is used and recognised as originating from Adidas throughout the member states of the EU. Adidas however was only able to provide relevant evidence of use in five of the 28 member states.

The court therefore rejected Adidas's appeal on the basis that it was unable to provide sufficient evidence in support of its challenge.

Adidas is not alone amongst the big brands in facing challenges of this type. In January of this year, the EUIPO upheld a claim from Irish fast food chain, Supermac, to revoke McDonald's registered trademark ‘Big Mac,’ despite the mark benefiting from over 20 years of protection as an EU registered trademark. Although many would argue that ‘Big Mac’ is synonymous with McDonald's, the EUIPO was prepared to annul the registration on the basis that the evidence provided by McDonald's was insufficient in proving that its mark was used and recognised throughout the EU.

These cases highlight that even the big brands should not simply rely on the assumption or even knowledge that people readily recognise their marks across the EU and worldwide. Whenever the validity of any mark is challenged, the owner of the trademark must be able to provide clear, relevant and prescriptive proof that the mark is used and recognised as a badge of origin of that owner throughout the territory in which such monopoly protection is sought.

Although decisions such as these may seem like a bit of a kick in the teeth for these big brands, it is important to bear in mind that brands such as Adidas and McDonald's already benefit from the protection of a wide range of registered trademarks across the world. The likes of Adidas and McDonald's will often maintain a wide portfolio of trademarks comprising every possible permutation of their marks and logos in an attempt to secure the highest level of protection for, arguably, their most valuable asset. These cases simply serve as a reminder that even the big brands have to ensure that any registered trademark that is important to their business is used and continues to be used throughout the territory in which it is registered and that they can provide sufficient evidence of such use. If they are unable to do so, successful challenges such as the above may continue to be brought against the marks of these big brands.

Lowri Morgan-Macdonald is a solicitor at Acuity Law, a law firm specialising in the tech, property & finance and creative services