Adidas refuses to throw in the towel in the judicial crusade it maintains for the exclusivity of its iconic three parallel stripes. The athletic clothing company has been fighting for years in different courts around the world to demonstrate that the stripe print irremediably evokes its products. For this reason, they defend, they have the right to market this drawing exclusively and prohibit the rest of the competitors from designing garments with this symbol. European justice already rejected this premise in 2019 by ruling that the drawing lacked “distinctive character.” But three new resolutions, from three different courts, have reopened the debate.
The question is, can a company reserve the right to exploit something as diffuse and abstract as the pattern of three longitudinal stripes? The courts are not clear. In the last two months, three courts from different parts of the world have ruled on the monopoly of the controversial drawing. Firstly, a month ago, Nike prevailed in the Higher Regional Court of the city of Düsseldorf (Germany) and managed to validate the design of four models of pants with parallel stripes. “Not everything that has stripes fits within the scope of protection,” Burkhard Führmeyer, the brand’s lawyer, defended at the hearing.
But the matter did not end there. In May, the European Union Intellectual Property Office (EUIPO), based in Alicante, tipped its balance in favor of Adidas by ruling against Thom Browne, an American luxury clothing brand that uses four parallel stripes on its garments. The agency understood that Adidas can register its three parallel stripes as a trademark if it specifies that these go on the sleeve of its sports jackets.
However, days later, on the other side of the Atlantic, a New York jury ruled in favor of the luxury brand Thom Browne against Adidas. The court understood just the opposite, that taking ownership of something as abstract as three parallel lines limits the margin of creation of competitors for no apparent reason. In 2018, Thom Browne began marketing its garments in the sportswear niche, but for the New York court there is no confusion.
The Adidas case is just one example of how tangled conflicts over brands that are geometric shapes can end up. Hearts, squares, circles, rings, lines, drops of water… The list of discussions about the exclusive use of overly simple shapes and symbols is long. Two months ago, the EUIPO, the administration that oversees the correct flow of trademarks in the European Union, denied the American company Polaroid from registering as its own a square within another square, which was intended to evoke instant photographs. The idea, however, did not convince the European authorities. The concept was too simple. The solution: unregister.
A similar response was received by Orange in its attempt to appropriate an orange square with a simple white stripe. The telecommunications group sought to register this symbol and prohibit its use by other competitors, but the European authorities, again, said no. The argument was again that these geometric style marks, so simple, lack what the law calls “distinctive character.”
Tug of war
Here is the crux of the legal conflict: when is a trademark distinctive? Or in other words, how to demonstrate that a geometric shape is closely linked to a product in the consumers’ imagination? The issue hides several legal thorns. As a general rule, the law imposes serious obstacles on companies that try to register trademarks that are simple. The objective, precisely, is to avoid disputes between companies. Like the eternal scuffle between Adidas and Thom Browne, a tug of war that has lasted seven years.
The regulations, however, provide for an exception. “This is the so-called distinctiveness acquired through use,” explains Elena Valiente, a lawyer at the firm specialized in industrial property Balder. These are special cases, the expert points out, examples such as the Adidas bands “in which a brand may seem very simple, but allows the average consumer to recognize the corporate origin.” And how is this effect achieved? Demonstrating before the judge the “repeated use in the market,” the lawyer responds.
The crux of the matter, explains Marta Tolón, Brand Director at ClarkeModet Spain, is right here, in demonstrating that a drawing “is not a mere decoration”, but rather an authentic identity feature of a brand and has its place in the collective imagination. From the market. Which is not an easy task. “The intense and continued use of the brand in the market and its specific location on the product are undoubtedly decisive when it comes to demonstrating that the general public is capable of attributing a specific business origin to the brand,” explains Tolón.
But there are gray spaces where tricks nest. “The undoubted reputation and prestige enjoyed by Adidas products causes other companies to try to take advantage of this fame in a more or less hidden way,” acknowledges Josep Montefusco, partner at Clifford Chance. For example, introducing small changes to the symbols such as “using four lines instead of three.” “To prove the existence of a risk of confusion, it must be taken into account that the products compared are similar, that they are aimed at the same type of consumers or that the prices and sales channels are the same,” says Montefusco. Even having several of these factors in his favor, the lawyer recognizes that “Adidas has had problems convincing the courts.”
Squares, hearts or drops
In principle, in the EU nothing prevents the registration of geometric symbols such as circles, squares, hearts or parallel lines. The headache comes, points out Josep Montefusco, partner at Clifford Chance, when the courts “set a very high bar regarding the requirement of distinctiveness.” One way to overcome the problem may be to add the name to the graphic element. On the other hand, explains the expert, “if a drawing of a drop of water is registered as a trademark to distinguish the sale of the product, third parties cannot be prevented from also using other drawings of drops,” as it is an excessive restriction.
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