Adidas Loses Bid to Trademark Famous Design in Europe

Looking at this photo of Jayne Lynch playing her iconic role in Glee of Sue Sylvester, you may have noticed that her famous tracksuit may bear the same resemblance to Adidas' iconic three-striped design. When you see Jayne Lynch wear this tracksuit with the three parallel stripes, do you immediately associate the brand of her tracksuit with Adidas?

This article delves into the complicated yet fascinating history of Adidas' iconic three striped design.

Image: Sue Sylvester image courtesy Fox

The History of Three Stripe Design

Adolf “Adi” Dassler started making shoe’s in 1924 with his older brother, Rudolf.

The brothers established the company, Dassler Brothers Shoe Factory, and began manufacturing running spikes, which featured two stripes across the shoe as a way of binding the shoe together and providing structure to it.

After World War II, the brothers would go their separate ways with Adi Dassler starting Adidas.

Unfortunately, when Adi started his new company, he lost the right to use the two signature stripes of his former company. As a result, he added a third stripe in the middle, creating the three stripes mark.

A small Finnish sportswear brand called Karhu had already registered the three stripes in their name. Fortunately, the Finnish label agreed to sell the trademark to Adidas for $1,800 and two bottles of whiskey.

Image: Dassler Brothers Shoe Factory running spikes. Image courtesy Beta Shoe Museum

Even though Adi Dassler bought the rights to use the three stripes as the trademark for his Adidas brand, the ability to continue to have it trademarked became a complex, highly debated issue. The dispute arose as to whether the three stripes trademark could be identified as a "distinctive character" associated with Adidas. This issue would continue to cause havoc for the Adidas brand for many years to come.

Companies at Battle

The dispute between Adidas and Belgian footwear company, Shoe Branding Europe BVBA (BVBA) has been ongoing.

In 2014, Adidas was granted trademark rights by the European Union Intellectual Property Office (EUIPO) to three parallel stripes of identical width in any direction on clothing, hats and shoes in Europe.

However, in 2016 BVBA applied to the European Union General Court (EUGC) for the Adidas' trademark to be annulled.

Why?

BVBA's made two applications in 2009 and 2011 for two parallel stripes to be trademarked in footwear. But Adidas won a trademark infringement suit against BVBA, alleging that a BVBA shoe bearing two stripes was too similar to its own three stripe design.

The EUGC Proceedings

During the EUGC proceedings in 2019, Adidas needed to show that the three parallel stripes, regardless of direction on a product, had acquired a "distinctive character" throughout Europe.

In order for Adidas to be successful in proving this, they had to show distinctiveness by way of a combination of factors, including showing how broadly it advertises its trademark, sales success in connection with products bearing the specific trademark, and third party media outlets’ coverage of the trademark, among other things.

Adidas did not need to show separate evidence of distinctiveness for each and every member state of the European Union, as that was deemed to be impracticable. Alternatively, the EUGC accepted evidence of grouping member states together in the same distribution network and have them treated as if they were one and the same national market.

As part of its submissions to the EUGC, Adidas only provided evidence relating to the designs use in five member states of the European Union only, without grouping the member states together.

After considering Adidas' arguments, the EUGC determined that the famous three stripes design commonly associated with Adidas was not a "distinctive character", like a pattern, which could be identified with the brand. Instead, EUGC determined that the three stripes design was an "ordinary figurative mark".

In other words, Adidas failed to provide sufficient evidence to show that when a consumer saw the three stripes on clothing, footwear or headgear, they would immediately associate such products with Adidas.

Even though the Adidas name is important, the three stripes design is a major contributor to the brand's recognition around the world.

To save face, Adidas may appeal the decision of EUGC to the European Court of Justice.

Regardless of whether they file an appeal, Adidas still maintains a number of other European Union registrations for its three stripes design, as well as registrations in other jurisdictions, such as the USA.

The case is Adidas AG v. European Union Intellectual Property Office (EUIPO) and Shoe Branding Europe BVBA, T‑307/17.

Image: Other designs with the three stripes design. Image courtesy Highsnobiety