European Union: Adidas Wins Battle Against Belgian Shoe Maker Over Three Parallel Stripes Trade Mark

In its judgment of 1 March 2018 in case T-629/16, the General Court of the European Union (the "Court") dismissed the appeal brought by Shoe Branding Europe BVBA ("SB") against the decision of the European Union Intellectual Property Office ("EUIPO") to refuse registration for its trade mark following the opposition filed by Adidas AG ("Adidas"). 

On 1 July 2009, SB filed an application for registration for an EU trade mark consisting of two parallel lines positioned on the outside surface of the upper part of a shoe, to be registered for "Footwear". Adidas opposed the registration on the basis of Article 8(1) of Regulation No 207/2009 on the Community trade mark (the "TM Regulation"), now Regulation 2017/1001 on the European Union trade mark, i.e., the likelihood of confusion between the trade marks, and of Article 8(5) of the TM Regulation, i.e., SB's taking unfair advantage of the reputation of the Adidas trade marks.

What followed was a long series of appeals and referrals which brought the case before the General Court and the Court of Justice of the European Union (the "ECJ") in 2016. When the ECJ upheld the General Court's finding that the signs were confusingly similar, the case was referred back to the Second Board of Appeal of the EUIPO.

Following the ECJ judgment, the Board of Appeal of the EUIPO sided with Adidas and rejected SB's trade mark application. This time, SB appealed to the Court alleging that the EUIPO had made several errors of assessment as regards: (i) the evidence of the reputation of the Adidas trade mark; (ii) the existence of damage to the reputation or distinctive character of the trade mark; and (iii) the absence of any due cause for the use of the trade mark applied for. 

In its judgment, the Court rejected all arguments and therefore dismissed the appeal in its entirety.

Reputation of Adidas Trade Mark

Article 8(5) of the TM Regulation protects an earlier trade mark that enjoys a reputation in the European Union. SB argued that the evidence of the reputation of the Adidas trade mark was insufficient. In its assessment of SB's argument, the Court took into account: (i) the high degree of awareness by the relevant public of the Adidas trade mark consisting of three parallel stripes (particularly when affixed to a shoe); (ii) the existence of several decisions of national courts noting the reputation of the Adidas trade mark; and (iii) the significant sponsorship activity undertaken by Adidas and the fact that many sports personalities wear footwear bearing the Adidas trade mark. In view of these factors, the Court held that Adidas had adequately demonstrated the reputation of its trade mark.

Injury to the Reputation or Distinctive Character of the Adidas Trade Mark

SB argued that its contested trade mark application did not take unfair advantage of nor was it detrimental to the distinctive character or the reputation of the Adidas trade mark. To that end, SB contended that Adidas had not shown evidence of injury. According to SB, its own two-stripe sign and the Adidas trade mark had coexisted "peacefully" for a great number of years. The Court disagreed and indicated that there had been no "peaceful coexistence" of the two trade marks as Adidas had already challenged the applicant's trade mark twice in the past. The Court also referred to the Board of Appeal's finding that the Adidas trade mark enjoyed a high, long-held and enduring reputation and that it benefitted from a power of attraction, linked to an image of quality and prestige, acquired after decades of investment, innovation and publicity. The Court added that the stronger the reputation of the trade mark, the more likely a subsequent trade mark is likely to take unfair advantage of it.

Furthermore, the Court noted that SB had clearly alluded to the Adidas trade mark in using the slogan "two stripes are enough" in a 2007 promotion campaign. By doing so, SB had clearly referred to the Adidas trade mark and had suggested that the goods which it sold under a two-striped trade mark had equal qualities to those sold by Adidas under a three-striped trade mark. The Court therefore rejected SB's argument.

Due Cause of Use of SB's Trade Mark

Finally, the Court also held that there was no due cause for the use of SB's trade mark as such use did not satisfy the conditions set out in the Court's case law. In particular, the applicant did not show that it had used the trade mark throughout the European territory. Moreover, the two trade marks had not coexisted peacefully and the Court noted that SB was unlikely to use its trade mark in good faith considering the 2007 campaign. The Court therefore dismissed SB's appeal.

This ruling is an important victory for Adidas in its long-running dispute with SB. Nonetheless, the battle surrounding the Adidas three-stripe trade mark continues after the EUIPO declared the Adidas three-stripe trade mark invalid for lack of distinctive character in separate proceedings initiated by SB. Adidas has appealed that decision to the General Court.

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

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Practice Guides
by Mondaq Advice Centres
Relevancy Powered by MondaqAI
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions