The Court of Justice of the European Union, the European
Union's highest court, has recently found that a trademark consisting of two
parallel stripes on a shoe was confusing with the famous Adidas
three stripe trademark.
Shoe Branding Europe BVBA ("Shoe Branding") filed an
application for a European Union trademark for a mark consisting of
two parallel stripes on the side of the shoe. The mark was
categorized as a position mark and is shown below:
Adidas AG ("Adidas") opposed the application on the
basis that the applied-for trademark was confusing with a number of
trademark registrations owned by it, including the following
Initially the opposition was rejected by the European Union
Intellectual Property Office ("EUIPO").
The Appeal Board
Adidas appealed to the Board of Appeal EUIPO who also dismissed
the appeal. The Board said that the differences in the number
of stripes and their respective positions on the shoe were
sufficient to support a finding that the trademarks in issue were
dissimilar. Even taking into account the reputation of the
Adidas registrations, the differences were sufficient to preclude
any likelihood of confusion in the mind of a reasonably well
informed and reasonably observant member of the public. The
Board arrived at this conclusion even though the goods were
identical and independently of the fact that the Adidas marks as a
result of their extensive use have a fairly high degree of
The General Court
Adidas appealed from this decision to the General Court of the
European Union. The General Court said that a global
assessment of the likelihood of confusion in relation to the design
marks in issue must be based on the overall impression given by the
marks, bearing in mind, in particular, their distinctive and
dominant components. The perception of the marks by the
average consumer of the goods in question plays a decisive role on
the global assessment of the likelihood of confusion. In this
regard, the average consumer normally perceives a mark as a whole
and does not proceed to analyze its various details.
The General Court found that difference between two and three
stripes placed on a shoe was not sufficient to affect the
similarities arising from the consideration of the marks in issue
and from their position on the side of the shoe. As a result,
the appeal was allowed and the decision of the Board of Appeal set
The Court of Justice of the European Union
Shoe Branding then appealed from this decision to the Court of
Justice. The court agreed that the assessment in the case
must be based on the overall impression given by the marks, bearing
in mind, in particular, their distinctive and dominant
components. They also agreed that minor difference between
the marks would not be noticed by consumers having an average level
of attention and would not influence the overall impression of the
respective marks. As a result the appeal was dismissed.
The Canadian Position
In July of 2015 we discussed a decision of the Federal Court
where there was an issue between Adidas and the owner of a
trademark application for a trademark that featured a single
stripe. In that case the judge considered the matter from the
point of view of an average consumer as a matter of first
impression. Both the Opposition Board and the trial judge
found there was a sufficient difference between the respective
marks to find no likelihood of confusion.
Notwithstanding this result, it is clear that it is a matter of
law, in Canada, the trademarks in issue must be considered as a
whole as they are perceived by a mythical consumer, who normally
makes up the market. It is not a correct approach to put the
trademarks side by side or to break them into their components and
make a careful comparison in order to observe similarities and
It appears that the approach to the issue of confusion is
relatively consistent in both Canada and the European Union.
However, the fact remains that trademark cases are driven by their
facts and the application of the relevant principles can be
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).