Adidas may oppose the registration, as a Community mark, of parallel stripes placed on the side of sports shoes.
In 2009, Shoe Branding Europe, a Belgian company, filed an application for registration of the mark reproduced below on the left with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) for shoes. Sports company adidas opposed registration of that mark, relying among other things on one of the marks reproduced below on the right:
After OHIM dismissed the opposition, adidas instituted proceedings before the General Court seeking annulment of OHIM’s decision. By judgment of 21 May 2015,1 the General Court upheld the action brought by adidas, taking the view that OHIM had been incorrect in finding that the marks were visually dissimilar when the overall impression produced by the marks was, to a certain extent, similar given that there were elements clearly common to the two marks (parallel sloping stripes, equidistant, of the same width, contrasting with the base colour of the shoe, placed on the outside of the shoe). Not satisfied with the General Court’s judgment, Shoe Branding Europe lodged an appeal before the Court of Justice.
In its order of 17 February 2016,2 the Court of Justice upholds the General Court’s judgment.
The Court notes, among other things, that the General Court did not contradict itself in finding that OHIM had not provided a proper statement of reasons for its findings on the similarity of the signs at issue, since the minor differences existing between them (i.e., the different length of the stripes resulting from the difference in angle) would not influence the overall impression produced by them on account of the presence of wide sloping stripes on the side of the shoe.
The Court further holds that since the General Court held that the differences between two and three stripes and in the length of the stripes were not sufficient to affect the similarities arising from the configuration of the signs at issue, it did conduct an overall assessment and, therefore, did not err in law.
Order of the Court of 17 February 2016 in Case C-396/15 P Shoe Branding Europe BVBA v adidas AG, 24 February 2016.
Source: Court of Justice of the European Union PRESS RELEASE No 17/16 Luxembourg, 24 February 2016