In 2014 Adidas obtained an EUTM for the sign reproduced below. The mark is identified as a figurative mark and corresponds the following description: ‘The mark consists of three parallel equidistant stripes of identical width, applied on the product in any direction.’ "three parallel equidistant stripes of identical width, applied on the product in any direction"
Shoe Branding Europe filed an application for a declaration of invalidity of the EUTM pursuant to what is now Article 59(1(a) EUTMR, in conjunction with Article 7(1)(b) therein).
The EUIPO Cancellation Division held Adidas's EUTM invalid due to lack of distinctive character, both inherent and acquired through use. Adidas appealed the said decision based on the fact that its EUTM had acquired distinctiveness through use. The appeal was rejected, and Adidas brought the matter before the General Court.
At this scenario, in the decision of June, 19, 2019 in case T 307/17, the General Court studied the following grounds claimed by Adidas:
Misinterpretation of the mark at issue.
Adidas claimed that although the sign is registered as a figurative mark, it represents a ‘surface pattern’ that may be reproduced in different dimensions and proportions depending on the goods on which it is applied.
The GC disagreed with the above and stated that the EUIPO can only consider what is set out in the application for registration. In this sense the GC recalled the well-known Sieckmann decision, “it is for the trade mark applicant to file a graphic representation of the mark corresponding precisely to the subject matter of the protection he wishes to secure. Once a trade mark is registered, the proprietor is not entitled to a broader protection than that afforded by that graphic representation [...]”.
Having said that the sing at issue is an ordinary figurative mark.
Misapplication of the “law of permissible variations”.
The General Court also finds that where a trade mark is extremely simple, even a slight difference could lead to a significant alteration to the characteristics of the mark as it had been registered. Additionally, in the evidence submitted the act of reversing the colour scheme, cannot be described as an insignificant variation as compared to the registered form of the mark at issue.
In this sense the court dismissed some of the images submitted on the ground that they were related to signs other than the mark at issue. Consequently, no infringement of the ‘law of permissible variations’ had occurred.
Error of assessment regarding the acquisition of distinctive character through use.
According to the court, “in order to demonstrate that the mark at issue has acquired distinctive character, the applicant cannot rely on all of the evidence which shows a mark consisting of three parallel equidistant stripes. Indeed, it follows from the answer to the first part of the plea in law that the relevant evidence is only that which shows the mark at issue in its registered form or, failing that, in forms which are broadly equivalent, which excludes forms of use where the colour scheme is reversed or which fail to respect the other essential characteristics of the mark at issue”.
In this case, the court considered that the only evidence which was relevant, were 5 market surveys completed in only 5 Member States. This was deemed insufficient to prove acquired distinctiveness throughout the EU.