EU General Court applies ‘KitKat principles’ for demonstrating acquired distinctiveness to confirm t

In its judgement of 19 June 2019, the EU General Court decided to uphold a decision of the EUIPO’s second Board of Appeal that invalidated Adidas’ figurative mark consisting of ‘three parallel equidistant stripes of identical width, applied on the product in any direction’.

The General Court confirms that the “extremely simple” mark was devoid of any inherent distinctive character. The Court does not accept Adidas’ arguments that its three stripe mark is a pattern mark, that can be used regardless of the scale or proportions. A pattern mark must be composed of a series of regularly repetitive elements, which is not the case here. Additionally, Adidas cannot call upon the ‘law of permissible variations’ to justify the varying use of the mark on its products. The Court determines that the differences constitute significant changes so that Adidas’ different forms of use cannot be regarded as broadly equivalent to the registered three stripe mark.

Lastly, The Court dismissed Adidas’ arguments that its three stripe mark has acquired distinctive character through use in the EU. The Court grounds its reasoning on the KitKat judgment of the EU Court of Justice, which we have discussed in a previous post. The Court holds that in assessing whether the three stripe mark has acquired distinctive character through use in the EU, Adidas must prove the acquisition of distinctiveness in every part of the EU in which it did not, ab initio, have such character (i.e. throughout the whole territory of the EU). This does not mean that Adidas must provide separate evidence for each individual Member State. It is sufficient that evidence is relevant with regard to several Member States, or even the whole of the EU, taking into account the homogenous market strategies for cross-border markets. In the case at hand, Adidas only provided relevant market studies for five Member States, which cannot be considered sufficient to demonstrate acquired distinctiveness throughout the EU.

The question whether Adidas will be able to prove acquired distinctiveness of its (other) three striped marks in the future, will greatly depend on the threshold the EUIPO and the EU Courts adopt when assessing evidence for the national EU markets separately and for the extrapolation of this evidence to comparable national or regional EU markets.